Lottie Joplin Thomas Trust v. Crown Publishers
| Decision Date | 26 May 1977 |
| Docket Number | No. 75 Civ. 1940 (JMC).,75 Civ. 1940 (JMC). |
| Citation | 456 F. Supp. 531 |
| Parties | The LOTTIE JOPLIN THOMAS TRUST, Mary L. Wormley, Administratrix d/b/n of the Estate of Lottie Joplin Thomas, and Mary L. Wormley, Plaintiffs, v. CROWN PUBLISHERS, INC., Olympic Records Corporation and Joseph Abend, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Linden & Deutsch, New York City (Joseph Calderon, New York City, of counsel), for plaintiffs.
Denhoffer, Ruden & Cramer, New York City (Martin R. Cramer, New York City, of counsel), for defendants.
After a bench trial, plaintiff is granted judgment on the complaint against defendants Joseph Abend and Olympic Records Corporation in the amount of $73,242.46 plus costs, and against defendant Crown Publishers, Inc. in the amount of $104,738.17 plus costs.
This suit for copyright infringement turns on the present ownership of the copyrighted work "Treemonisha," composed by the late Scott Joplin, and two compositions originally contained in "Treemonisha," "Treemonisha (Prelude to Act III)" and "A Real Slow Drag: from Treemonisha." Joplin procured copyright protection for these works by registration with the Copyright Office and was issued certificates of copyright registration as follows:
Pursuant to 17 U.S.C. § 241 Lottie Joplin Thomas, Scott Joplin's widow, was issued certificates of renewal of these copyrights, as follows:
On September 26, 1952 Lottie Joplin Thomas assigned these renewal copyrights to Wilbur Sweatman as trustee of the Lottie Joplin Thomas Trust (hereinafter the "Trust"). Sweatman remained the trustee of the Trust until his death on March 9, 1961, at which time Robert Rosborne was appointed successor trustee. Prior to his death, however, Sweatman executed a document that purports to transfer to the Wilbur Sweatman Music Publishing Company ("Music Publishing Company") all of the "right, title, and interest and Renewal interests in and to the musical compositions, entitled" "Treemonisha — In 3 Acts" and "A Real Slow Drag," among others.3 The assignment, dated August 14, 1959, was executed by Wilbur Sweatman "acting as executor of the estate of Scott Joplin" and recorded by the Copyright Office on August 17, 1959. Scott Joplin, however, had no will, nor was Sweatman ever appointed the administrator of Joplin's Estate.4 Moreover, a search of the Trust's files revealed no evidence of such an assignment.
Upon Sweatman's death, ownership of the Wilbur Sweatman Music Publishing Company, along with the purported copyright assignment, apparently devolved upon Robert Sweeney,5 although the Surrogate Court's records of Sweatman's estate make no mention of the Joplin works or of the Music Publishing Company.
During the fall of 1972 defendant Joseph Abend, president and sole shareholder of defendant Olympic Records Corporation ("Olympic"), inquired of the Harry Fox Agency ("Fox") whether a license to record the three compositions that are the subject of this lawsuit could be obtained.6 He was told that the agency could not issue such licenses,7 although Fox did represent the Lottie Joplin Thomas Trust.
In spite of this, Olympic proceeded to record a five phonograph record set entitled "Scott Joplin His Complete Works,"8 a set that included "Treemonisha," "A Real Slow Drag," and "Prelude to Act III." Abend testified that he assumed the Joplin compositions in issue were in the public domain and thus freely recordable. The set was first sold during the fall of 1974.
Shortly thereafter, the Trust's counsel (by then the law firm of Linden and Deutch) learned of the apparent infringement and notified Murray Hill Records of this claim. Upon learning of this, Abend contacted the American Society of Composers, Authors and Publishers and was told that the Wilbur Sweatman Music Publishing Company was the publisher of the works in question. A search of the Copyright Office records revealed the Sweatman assignment. Based upon this information sale of the record set continued, and this suit was instituted.
Initiation of this lawsuit did not end matters, however. Abend, having learned of the Sweatman assignment, sought out Robert Sweeney, who, on behalf of the Wilbur Sweatman Music Publishing Company, assigned the renewed copyrights to himself and Joseph Abend, for the sum of $1.00.
Defendants invoke the related equitable doctrines of laches and estoppel in defense of the charge of infringement. These defenses will be discussed prior to reaching the merits.
Defendants claim that plaintiff's delay in instituting this action should bar her9 from enforcing any copyright claim she may have. They assert that the plaintiff (or her predecessor in interest, the Trust) had constructive notice of Sweatman's competing claim to the copyright when his purported assignment was registered with the Copyright Office in August of 1959, and had actual notice of this claim prior to June 28, 1967 when Rosborne & Rosborne, then counsel to the Trust, inquired of Robert Sweeney regarding the matter.
This argument fails for two reasons. Firstly, the mere passage of time is insufficient to establish laches as a bar to suit. Some prejudice to one of the defendants must be added to the delay for it to ripen into laches. Costello v. United States, 365 U.S. 265, 282, 81 S.Ct. 534, 5 L.Ed.2d 551 (1961); Advanced Hydraulics, Inc. v. Otis Elevator Co., 525 F.2d 477, 479 (7th Cir. 1975); Tobacco Workers Int'l Union, Local 317 v. Lorillard Corp., 448 F.2d 949, 958 (4th Cir. 1971); In re Stilwell, 120 F.2d 194 (2d Cir. 1941); Edward B. Marks Music Corp. v. Wonnell, 61 F.Supp. 722, 728 (S.D.N.Y.1945) (Conger, J.). The record herein is barren of any evidence of prejudice to the defendants. Their production and sale of the Joplin compositions did not begin until 1974, and the Trust immediately and vigorously asserted its copyright proprietorship. Additionally, when manufacture and sale of the recordings began, defendants were themselves totally unaware of the Sweatman assignment. This assignment was a fortuitous discovery made by Abend only after he was notified by plaintiff's counsel of the claimed infringement. Thus, defendants could not have been prejudiced by the Trust's failure to challenge the assignment prior to 1975.
Secondly, under the circumstances of this case plaintiff's delay was not unreasonable. Joplin's works, especially "Treemonisha," rested in oblivion until the use of his rag, "The Entertainer," in the highly successful movie entitled "The Sting" brought his compositions to prominence. Counsel to the Trust could have reasonably concluded that, prior to that time, enforcement of the copyright was not worth the cost of litigation, especially because no infringing phonograph record was on the market.
Edward B. Marks Music Corp. v. Wonnell, supra, is instructive in this regard. In that case there was no attempt to assert a copyright claim for 27 years. Because the song had achieved popularity only at the end of that period, however, the court rejected the defense of laches and held the claim timely asserted. 61 F.Supp. at 728-29.
Defendants' contention that plaintiff is estopped from enforcing the copyright because of the Trust's previous conduct in this regard, an argument akin to the laches defense, also fails.
In order to establish an estoppel, it must be shown that the party to be estopped had knowledge of defendant's infringing conduct, and either intended that his own conduct be relied upon or acted so that the party asserting the estoppel has a right to believe it was so intended. Additionally, the defendant must be ignorant of the true facts and must rely on plaintiff's conduct to his detriment. Hampton v. Paramount Pictures Corp., 279 F.2d 100, 104 (9th Cir.), cert. denied, 364 U.S. 882, 81 S.Ct. 170, 5 L.Ed.2d 103 (1960); Rohauer v. Killiam Shows, Inc., 379 F.Supp. 723, 731 (S.D. N.Y.1974) (Bauman, J.).
Even assuming that plaintiff was aware of the Sweatman assignment from its inception, none of the other elements of estoppel is present. Defendants' infringing conduct did not even begin until 1974, and the Trust immediately asserted its rights. Although defendants were, in fact, ignorant of the "true facts," plaintiff's claim of copyright proprietorship, they were also ignorant of the facts they assert as a basis for the estoppel. This being the case, they could not have relied on plaintiff's conduct to their detriment. Moreover, this argument is fatally undermined by Joseph Abend's own testimony that, after he contacted the Harry Fox Agency and was told they could not issue licenses covering the instant works, he assumed they were in the public domain and proceeded with sale of the record package, thereby risking the possibility of infringement.10
Related to the equitable doctrines of estoppel and laches is the claim that the Trust has abandoned any claim it or its successors may have in the copyright. In order to effect an abandonment, the copyright proprietor must manifest by some overt act his intention to surrender his right. Imperial Homes Corp. v. Lamont, 458 F.2d 895, 898 (5th Cir. 1972); Hampton v. Paramount Pictures Corp., 279 F.2d 100, 104 (9th Cir.), cert. denied, 364 U.S. 882, 81 S.Ct. 170, 5 L.Ed.2d 103 (1960); National Comics Publications v. Fawcett Publications, 191 F.2d 594, 598 (2d Cir. 1951); Filmvideo Releasing Corp. v. Hastings, 426 F.Supp. 690, 695 (S.D.N.Y.1976) (Werker, J.); Rohauer v. Killiam Shows, Inc., 379 F.Supp. 723, 730-31 (S.D.N.Y.1974) (Bauman, J.); L&L White Metal Casting...
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