Hoyt v. Bates

• Decision Date: 03 July 1897
• Docket Number: 751.
• Citation: 81 F. 641
• Parties: HOYT v. BATES et al.
• Court: U.S. District Court — District of Massachusetts

81 F. 641

HOYT v. BATES et al.

No. 751.

United States Circuit Court, D. Massachusetts.

July 3, 1897

The bill, omitting the formal parts, was in full as follows:

(1) The complainant is a playwright and theatrical manager, and has written many plays and dramas, containing songs and music which have been eminently successful before the public throughout the United States and Canada. In 1894 he wrote a play entitled 'A Black Sheep,' and, as a part thereof, the worlds of a song entitled 'Sweet Daisy Stokes.' The music to be used in connection with said words was written by Richard Stahl, who was then in the employ and pay of the complainant, and said song and music became and are the property of the complainant, and are valuable as a part of said play, sung by Goodrich Mudd principal character thereof, which role has from the first been taken by Otis Harlan, an actor in the employ of the complainant, and a resident of the city, county, and state of New York.

(2) The respondents are music publishers in the city of Boston, and one or both of them have been and are connected with theatrical matters, as musical director and otherwise. In December, 1894, the respondents desired to print and sell said song, and they negotiated with complainant and said Harlan for the right so to do. Complainant authorized said Harlan to give the respondents the right to print and sell copies of said song, but upon the express proviso that the arrangement to be made and the right to be given respondents should not interfere in any manner with any use which the complainant might wish to make of the words or music of said song, and the same proviso had previously been stated by complainant to respondents as a condition which must be a part of any agreement to be made with them.

(3) The respondents, as complainant knew, did print and publish said song, and offered the same for sale, and sold copies thereof and without complainant's knowledge, until recently, the respondents deposited the title of said song in the office of the librarian of congress at Washington, in their own names and took the other steps necessary to secure a copyright thereof, and now hold said copyright in their own names.

(4) The complainant continued to make use of said song in his play 'A Black Sheep,' throughout the United States without objection from respondents, and recently arranged with the New York Herald, a newspaper published in the city of New York, to print the same in a Sunday edition thereof, to be issued some time during the month of January, 1896. His said play was then being produced at Hoyt's Theater, in the city of New York, where it had been running for -- - nights; and such publication by said paper would have been of great benefit as an advertisement of said play, and to the complainant. It would moreover, have been an advantage to the respondents in the sale of copies of said song, for the reason that large numbers of persons would have seen it in the newspaper. It is a common practice among music publishers to induce some leading newspaper to print the words and music of their publications for the purpose of increasing the sales thereof, it being found that persons who see the music in the newspapers are unable to make continued use of it in that form of publication, and purchase the same from music dealers to secure the same in more permanent form. According to the provisions of the United States statutes concerning copyright, a penalty of one dollar a copy attaches to the unauthorized publication of copyright works; and, upon discovering that the respondents permission to publish as aforesaid, so that there might not be any technical violation of the statute. The respondents refused to allow the complainant to make said use of said song, and claimed that they were entitled to the exclusive control thereof, by virtue of a contract signed by the said Harland, a copy of which the complainant has secured from respondents' counsel, and attaches hereto as 'Exhibit A,' and threatened to prosecute the publishers of said paper if said song was so printed by them. Said publishers thereupon refused to print the song, and complainant was deprived of the benefit which would have resulted therefrom. Complainant says that said Harlan had no authority to give to respondents exclusive rights in the publication of said song, in derogation of complainant's rights to make such use of said song as he might wish, and that respondents have no right of ownership in said copyright, or right to enforce any penalty for the violation thereof, but that said copyright and the right to use said song as he may wish belong to complainant.

Wherefore complainant prays: First. That respondents may be ordered to transfer and assign said copyright so held in their name to him by instrument of assignment, such as is provided for by the statutes of the United States. Second. That an injunction issue restraining respondents from interfering in any manner with the use by complainant of said words and music. Third. That a preliminary injunction issue from this court restraining respondents from interfering with any use which the complainant may desire to make of said words and music, and from threatening any person authorized by the complainant to make use thereof with prosecution under said copyright laws, and in particular from threatening the owners and publishers of the New York Herald, aforesaid, with suit or prosecution for violation of the copyright so standing in their names, and from prosecuting or suing said New York Herald or any other person or corporation authorized by the complainant to use said words and music.

To this bill there was attached as an exhibit the following contract:

Exhibit A.

Boston, Mass., Jan. 1, 1895.

This agreement is entered into between Charles H. Hoyt, and Otis Harlan, and Bates & Bendix, music publishers, of Boston, Mass., for the publication of the song entitled 'Sweet Daisy Stokes.' Said Bates & Bendix agree to pay to said Charles H. Hoyt and Otis Harlan a royalty of five cents on each copy; royalties to be paid every three months from date of publication. Said Bates & Bendix are to have full and absolute rights of words and music of said song for publication only.

(Signed)

Otis Harlan, For Hoyt & Harlan.

(Signed)

Bates & Bendix.

1. It is submitted that the case presented by the complainant's bill is founded upon the contract between the parties, and not upon the statutes of the United States relating to copyright, and therefore there is no jurisdiction in this court to entertain this bill on removal. Silver v. Holt, per Colt, J., May 13, 1895; Pulte v. Derby, 5 McLean, 328 F. Cas. No. 11,465; Little v. Hall, 18 How. 165; Jollie v. Jaques, 1 Blatchf. 618, Fed. Cas. No. 7,437. These cases all arose on the question of copyright, but the cases on patent questions are equally decisive, and both rest on the same clause of the statute. Rev. St. U.S., Sec. 711, cl. 5; Manufacturing Co. v. Hyatt, 125 U.S. 46, 8 Sup.Ct. 756; Felix v. Scharnweber, 125 U.S. 54, 8 Sup.Ct. 759; Wilson v. Sanford, 10 How. 99; Hartell v. Tilghman, 99 U.S. 547; Trading Co. v. Glaenzer, 30 F. 387; Ingalls v. Tice, 14 F. 352; Bloomer v. Gilpin, 4 Fish.Pat.Cas. 50, Fed. Cas. No. 1,558. If the circuit could have no original jurisdiction of such case, it can have none by removal on the ground that a federal question is involved. Albright v. Teas, 106 U.S. 613, 1 Sup.Ct. 550. The cases are many where state courts have taken jurisdiction of cases involving patents and copyrights, where the controversy grew out of some contract right. Carter v. Bailey, 64 Me. 458; Willis v. Tibbals, 33 N.Y.Super.Ct. 220; Gould v. Banks, 8 Wend. 562; Lockwood v. Lockwood, 33 Iowa, 509; Green v. Wilson, 21 N.J.Eq. 211. The state courts have taken jurisdiction of suits to compel the assignment of patents, and have ordered such assignments to be made (Barton v. White, 144 Mass. 218, 10 N.E. 840; Somerby v. Buntin, 118 Mass. 279; Binney v. Annan, 107 Mass. 94; In re Keach, 14 R.I. 571; Fuller & Johnson Manuf'g Co. v. Bartlett, 68 Wis. 73, 31 N.W. 747; Bank v. Robinson, 57 Cal. 520); While the federal court has declined jurisdiction in a similar case (Ryan v. Lee, 10 F. 917). That the state court may be incidentally called upon to pass upon the validity of a patent or copyright does not oust its jurisdiction when the case before it is founded on a contract right. Brown v. Hedge Co., 64 Tex. 396; David v. Park, 103 Mass. 502; Nash v. Lull, 102 Mass. 62; Merserole v. Union Paper Collar Co., 6 Blatchf. 356, Fed. Cas. No. 9,488.

2. The jurisdiction of the federal court must appear upon the face of the plaintiff's pleading. Tennessee v. Union & Planters' Bank, 152 U.S. 454, 14 Sup.Ct. 654; Chappell v. Waterworth, 155 U.S. 102, 15 Sup.Ct. 34. Where the jurisdiction of the federal court is doubtful, the case should be remanded. Fitzgerald v. Railway Co., 45 F. 812; Wolff v. Archibald, 14 F. 369.

3. If this case does involve a federal question under the copyright laws, then the state court had no jurisdiction whatever. Pierpont v. Fowle, 2 Woodb. & M. 23, Fed. Cas. no 11,152; Boucicault v. Hart, 13 Blatchf. 47, Fed. Cas. No. 1,692. Where there is a total absence of jurisdiction over the subject-matter in the state court, so that it had no power to sustain the suit in which the controversy was sought to be litigated, in its then existing form or any other form, there can be no jurisdiction in the federal court to entertain it on removal, although in some other form it...