Harms, Inc. v. Tops Music Enterprises, Inc., of Cal.

• Decision Date: 13 March 1958
• Docket Number: No. 1255-57.,1255-57.
• Citation: 160 F. Supp. 77
• Court: U.S. District Court — Southern District of California
• Parties: HARMS, Inc., a corporation, Plaintiff, v. TOPS MUSIC ENTERPRISES, INC., OF CALIFORNIA, a corporation, Carl Doshay, Defendants.

160 F. Supp. 77

HARMS, Inc., a corporation, Plaintiff, v. TOPS MUSIC ENTERPRISES, INC., OF CALIFORNIA, a corporation, Carl Doshay, Defendants.

No. 1255-57.

United States District Court S. D. California, Central Division.

March 13, 1958.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Fink, Levinthal & Lavery, by Arthur Katz, Los Angeles, Cal., for plaintiff.

Jerry Rolston, Jerry K. Fields, Beverly Hills, Cal., for defendants.

YANKWICH, Chief Judge.

This is one of several actions instituted by Harms, Inc., a New York corporation, which is the owner of copyrights to musical compositions against various defendants, California individuals and corporations, who are alleged to have infringed their copyrights,¹ by reproducing songs on records without the payment of a license fee and without authorization.²

In the case before us, the particular musical composition is known as "You and the Night and the Music", the authors of which are Howard Dietz and Arthur Schwartz, who have transferred their rights to the plaintiff. The song was published on November 22, 1934, and registered on November 23, 1934.

The complaint states two claims or causes of action, one seeking injunctive relief and damages for infringement of the copyright, and the other seeking injunctive relief and additional and punitive damages for unfair competition, based on diversity under California state law, and for violation of the Lanham Trademark Act.³

In substance, it is alleged in the second cause of action that the act of selling inferior recordings of the music without the supervision and control of the plaintiff tends to detract from the great reputation of the writers of the song and the plaintiffs as the owner of the copyright.

Additional allegations will be referred to in the discussion to follow.

The defendants have moved to dismiss the entire complaint, or, in the alternative, to strike certain portions of it upon the ground that neither of the counts states a claim upon which relief can be granted.⁴

The attack on the first cause of action for copyright infringement need not detain us. We are satisfied that this count sufficiently avers ownership of copyright and infringement by the defendants as required by the statute and fulfills the requirements as to the statement of a claim obtaining in this circuit.⁵

As to the second cause of action, lack of jurisdiction is pleaded.⁶

We need not concern ourselves with minor contentions such as that the plaintiff has not complied with California law for doing business in the State of California.⁷ For, conceding that the certificate on file shows non-compliance, plaintiff's right to sue being federal,⁸ it is not governed by state law. The plaintiff may sue in the jurisdiction where the defendant is found.⁹ And granted that in a diversity case, we would be governed by state law,¹⁰ the questions involved in this case arise under federal law, and the State is powerless to determine the conditions under which a corporation, in a non-diversity case, or in a pendent action, may sue in federal courts.¹¹

More basic is the question whether a claim either under the Lanham Trademark Act or unfair competition under California law is stated in the second cause of action.

I COPYRIGHT AND UNFAIR COMPETITION

Concededly, it is the law of this circuit that the acts of unfair competition which are within the purview of the Lanham Trademark Act¹² must have occurred in or affect interstate commerce.¹³ Under the general concept of unfair competition, relief can be granted for the misuse, truncation or distortion of the literary property of another,¹⁴ or even the title to one's work.¹⁵ Under these cases, while "mere dilution" of value of literary property will not be protected absent a statute, such as Section 361, subd. 1, of the New York General Business Law, McKinney's Consol. Laws, c. 20, enacted in 1954, protection will be afforded for specific injuries to literary rights in works which may not be protected by copyright. Where a song is copyrighted under a name, it cannot be dissociated from it. He who pirates it, pirates it as a whole. While protection may be afforded to the appropriation of a title as unfair competition,¹⁶ an owner of a copyrighted song who sues in one claim for the full measure of recovery allowed by the copyright law, will not be allowed to recover in another claim for unauthorized use of the title. The reason was stated by the Court of Appeals for the Second Circuit:

"There is no claim here that Krug or the appellees meant to, or that their labeling did in fact, mislead the public as to the musical content of the records. If the appellants' titles were used, it was because their songs were used. Absent the Copyright Law, this would be proper. National Comics Publication v. Fawcett Publications, 2 Cir., 191 F.2d 594. Titles are protected only to the extent necessary to prevent confusion on the part of the public as to the identity of the composition covered by the title. Warner Bros. Pictures, Inc., v. Majestic Pictures Corp., 2 Cir., 70 F.2d 310, 312. Where, as here, there is no confusion and no deception, protection is denied."¹⁷ (Emphasis added.)

In the case before us, the use of the title was incidental to the use of the song. Granted that, at times, especially in cases involving trademarks, the facts which prove infringement may also prove unfair competition,¹⁸ in the realm of copyright, the title cannot be dissociated from the song and the claim be made that it having been associated with the author, there can be recovery for both infringement of the copyright and unfair competition.¹⁹ The cause of action is one, — namely, violation of the copyright through unauthorized and unlicensed recording. It cannot be split into two causes of action with separate demands for relief under each. This the plaintiff has done. For, stripped of superfluous general verbiage, it is alleged, in substance, in the second cause of action, that, under licensing, the plaintiff would have control over the method and technique of recording. Deprivation of this right cannot be turned into a separate tort, if permission to record exists, or license fee is tendered.²⁰

In reality, the second cause of action segmentizes the sole cause of action for infringement which the plaintiff admittedly has, by seeking added relief, without additional facts.²¹

Reference has already been made to the instances in which courts will protect the integrity of a man's intellectual work.

To particularize: Courts will protect against (a) the omission of the author's name unless, by contract, the right is given to the publisher to do so,²² or (b) false attribution of authorship,²³ (c) infringement of originality of arrangement or recording of a song,²⁴ as well as for (d) distortion or truncation of work as to text or content.²⁵

There is not in the second cause of action in the complaint before us any allegation that the defendants, in making the recording, have been guilty of any of these or similar acts. The mere allegation that the lack of control on the part of the plaintiff over the recording, by resulting in inferior recording, might injure the reputation of the author and the plaintiff, is insufficient to bring it within the purview of the rule of unfair competition declared in the cases.²⁶ Absent allegations of misrepresentation or deception on the public, there can be no recovery for unfair competition.

As stated in a well known case:

"The invocation of equity rests more vitally upon the unfairness. If B. represents that his goods are made by A., and if damage therefrom to A., is to be seen, we are aware of no consideration which makes it controlling whether this damage to A. will come from market competition with some article which A. is then manufacturing or will come in some other way. The injury to A. is present, and the fraud upon the consumer is present; nothing else is needed."²⁷

A more recent case decided by the Court of Appeals for the Second Circuit has a very important bearing upon the facts before us. That case²⁸ involved the photographic reproduction, with interpolations and sale of an Italian Libretto based on Shakespeare's "Falstaff", and the vocal and piano score of Verdi's music upon which the copyright had expired. Finding no simulation or imitation or any other element of deceptive representation, the Court sustained a lower court ruling which declined to grant relief on the ground of unfair competition, saying:

"We do not mean that the defendant could under no circumstances be guilty of `unfair competition' in his use of the `work'; but it would have to be by some conduct other than copying it. Since he confined himself to that and gave notice that it was his product, the Copyright Act protected him."²⁹

While the Court there was dealing with material on which the copyright had expired, the ruling applies with greater strength to copyrighted material, because in such case, there would be more cogent reason for denying relief merely upon facts involving copyright infringement. Otherwise, we would allow a person, upon the basis of facts which constitute no more than copyright infringement, a double recovery. So it follows that, whether the Lanham Trademark Act³⁰ does or does not establish a federal action for unfair competition,³¹ and if it does, whether it applies to copyrighted materials, the fact is that the second cause of action alleges no facts which constitute the type of distortion, simulation or attack upon the integrity of a work in the realm of literary property for which the courts have granted relief, either under State³² or federal law.³³

So the conclusion is inescapable that the second cause of action, in its present form, cannot stand.

II ADMISSION OF LIABILITY

The ruling on the motions to dismiss may call for an amended complaint which may require the filing of new responsive pleadings by the defendants. However, because what is done in this case will be the...