Manning v. Miller Music Corporation

• Decision Date: 10 June 1959
• Citation: 174 F. Supp. 192
• Parties: Dick MANNING and Larry Stock, Plaintiffs, v. MILLER MUSIC CORPORATION, Twentieth Century Music Corporation, Twentieth Century-Fox Film Corporation, Paul Francis Webster, Sammy Fain and Remick Music Corporation, Defendants.
• Court: U.S. District Court — Southern District of New York

174 F. Supp. 192

Dick MANNING and Larry Stock, Plaintiffs, v. MILLER MUSIC CORPORATION, Twentieth Century Music Corporation, Twentieth Century-Fox Film Corporation, Paul Francis Webster, Sammy Fain and Remick Music Corporation, Defendants.

United States District Court S. D. New York.

June 10, 1959.

George Garfunkel, New York City, for plaintiffs.

Abeles & Bernstein, New York City, Arnold J. Bernstein, New York City, of counsel, for defendants Miller Music Corp., Twentieth Century Music Corp., and Twentieth Century-Fox Film Corp.

FREDERICK van PELT BRYAN, District Judge.

All of the corporate defendants except Remick Music Corporation move to dismiss the complaint on the grounds that it fails to state a claim upon which relief can be granted, and that plaintiffs are not the real parties in interest. Rules 12(b)(6) and 17(a), F.R.Civ.P., 28 U. S.C.

Plaintiffs Manning and Stock allege that they are the composers of the song "Morningside of the Mountain", that Music Publishers Holding Corporation (not a party to this action) secured a copyright on their song pursuant to a written agreement with them, and that Music Publishers assigned the copyright to defendant Remick Music Corporation, the publisher.¹

It is alleged that "Morningside of the Mountain" was widely exploited and had great public success, and that the copyright was infringed by the publication, exploitation and sale of a song called "A Certain Smile" composed by defendants Webster and Fain. Defendants Miller Music Corporation, Twentieth Century Music Corporation, Twentieth-Century Fox Film Corporation and Webster and Fain are alleged to be connected in various ways with the infringement charged, and it is claimed that all are liable for infringement of the "plaintiffs' copyright".

Remick Music Corporation is joined as a defendant, plaintiffs allege, because by the terms of the agreement between them and "their publisher the plaintiffs have reserved and retained the right to institute this action in the event that their publisher does not do so".

This agreement is not part of the complaint but it is not disputed that it is the "1947 Revised Popular Songwriters Contract" used by the American Guild of Authors and Composers, a copy of which is before the court.

The agreement provides that the publisher may bring action against infringers at its expense but that if the publisher fails to institute such action within 30 days after written demand by plaintiffs, plaintiffs are entitled to institute such suit at their own expense. All sums recovered as a result of any such action, after the deduction of expenses, are to be divided equally between the publisher and the authors. No settlement may be made by either without first notifying the other, and in the event that either objects the party objecting thereto may assume the prosecution of the action and expenses.

The complaint alleges that a demand was made on Remick to institute this action but that Remick refused so to do. No claim for affirmative relief is made against Remick.

The instant motion proceeds on the theory that plaintiffs are not the proprietors of the copyright alleged to have been infringed, are not aggrieved parties within the meaning of the copyright law, 17 U.S.C. § 112, and therefore cannot maintain the action. See Goldwyn Pictures Corporation v. Howells Sales Co., 2 Cir., 282 F. 9.

To determine what rights plaintiffs have in the premises the Copyright Law must be taken as the point of departure. For unless the right to maintain an action for infringement of this statutory copyright is conferred on the plaintiffs by that statute they may not maintain the action. See, e.g., Danks v. Gordon, 2 Cir., 272 F. 821; Carl Laemmle Music Co. v. Stern, 2 Cir., 219 F. 534. Cf. Form 17, F.R.Civ.P., 28 U.S.C.; Ball, Law of Copyright and Literary Property, (1944), 661, 680. Cf. Miller Music Corp. v. Charles N. Daniels, Inc., D.C.S.D.N.Y., 158 F.Supp. 188, affirmed 2 Cir., 265 F.2d 925.²

17 U.S.C. § 101 provides that one who infringes the copyright in any protected work shall be liable to "pay to the copyright proprietor" damages. Section 112 provides for injunctive relief to "any party aggrieved" but the "party aggrieved" must have the right to maintain a suit under Section 101 as a "copyright proprietor" in order to be entitled to such injunctive relief. Goldwyn Pictures Corporation v. Howells Sales Co., supra.

Thus the statute gives only copyright proprietors the right to sue for infringement.

A "proprietor", in so far as the term is important here, is either the author of the work or his assignee. Dam v. Kirke La Shelle Co., C.C.S.D.N.Y., 166 F. 589, affirmed 2 Cir., 175 F. 902, 41 L.R.A.,N.S., 1002; In re Waterson, Berlin & Snyder Co., 2 Cir., 48 F.2d 704; Atlantic Monthly Co. v. Post Pub. Co., D. C.D.Mass., 27 F.2d 556. See Buck v. Gibbs, D.C.N.D.Fla., 34 F.Supp. 510, modified on other grounds Watson v. Buck, 313 U.S. 387, 61 S.Ct. 962, 85 L.Ed. 1416.

The party bringing suit must not only be a proprietor in this sense but also a copyright "proprietor", that is to say, he must have owned the copyright at the time of the infringement. For the transfer of the copyright owner's "right, title and interest" will not ordinarily vest in his assignee a cause of action for an infringement which occurred prior to the assignment. Kriger v. MacFadden Publications, Inc., D.C.S.D.N.Y., 43 F.Supp. 170, 172. Nor can the owner-assignor maintain such an action if the infringement took place subsequent to the assignment, or unless it took place before the transfer. M. J. Golden & Co., Inc. v. Pittsburgh Brewing Co., D.C.W.D. Penn., 137 F.Supp. 455.

However, the courts recognize that legal title to a copyright may be in one person and equitable title in another. Thus, one may be a "proprietor" of a copyright if he holds legal title, though equitable title may be in another either expressly (Schellberg v. Empringham, D.C.S.D.N.Y., 36 F.2d 991) or as trustee ex malificio (Ted Browne Music Co. v. Fowler, 2 Cir., 290 F. 751). In such case the courts treat one who has established that he is the equitable owner as a copyright proprietor within the meaning of the statute and permit him to maintain suit for infringement. Ted Browne Music Co. v. Fowler, supra; Schellberg v. Empringham, supra; Bisel v. Ladner, 3 Cir., 1 F.2d 436.

Plaintiffs here urge that they hold equitable title to the copyright and thus fall within the rule permitting equitable owners to sue. They say that they enjoy very substantial rights under their agreement with the publisher and that these rights are tantamount to equitable title.

The rights reserved to the plaintiffs by the agreement include (1) the right to receive royalties; (2) a restriction on assignment of certain rights by the publisher, such as motion picture rights, without plaintiffs' consent; (3) limitation on publisher's right to grant block or bulk licenses without the consent of the Songwriters Protective Association of which plaintiffs are members; (4) restriction on the publisher's right to grant licenses for television or for new purposes without plaintiffs' written consent; (5) the right for a limited period to secure reassignment of the song and copyright if it is not made productive by the publisher; (6) specific reservation of renewal rights; (7) the right to share in any damages recovered in any infringement action.³

However, nowhere does this lengthy agreement upon which plaintiffs base their rights declare an express trust. It provides in the first paragraph "The Writer(s) hereby sells, assigns, transfers and delivers to the publisher * * a * * * musical composition * * *, including the title, words, and music thereof, and the right to secure copyright therein throughout the entire world * * *". This language has been held to vest the publisher with full title to the composition and the copyright. Kriger v. MacFadden Publications, supra. See, also, Local Trademarks, Inc. v. Powers, D.C.E.D.Penn., 56 F.Supp. 751. Thus, the agreement does not support the allegation in the complaint that "plaintiffs' copyright" has been infringed.

But this is not decisive of the question presented. The Kriger case, where the same language was involved, and which presented a problem similar to that here, contains dictum to the effect that "the cases do make one distinction, however, * * *. They seem to hold that if in this case the holder of the copyright was included as a party, then the complaint would be good". 43 F.Supp. at page 172. This is based upon the peculiar relationship between the author and his publisher, which is stated in Schisgall v. Fairchild Publications, Inc., 207 Misc. 224, 230-231, 137 N.Y.S.2d 312, 318, to be as follows:

"It is not necessary to use the magic words of `fiduciary relationship', or to hold that a `relationship of trust and confidence' was created by the contract, or to find that the publisher became a `trustee' of the copyright for the benefit of the plaintiffs. * * *.

"The law implies a promise on the publisher's part to endeavor to make the work productive, since that is the very purpose of the assignment of literary rights and the correlative obligation to pay royalties. * * *. Had the publisher intentionally permitted the copyright to be infringed by others, it would thereby have subjected itself to liability as a fiduciary to the plaintiffs."

It is this fiduciary relationship, imposing equitable obligations upon the publisher beyond those ordinarily imposed by law upon those dealing fully at arms' length, which gives the plaintiffs standing to sue here.⁴ See, e. g., Nelson v. Mills Music, Inc., 278 App.Div. 311, 104 N.Y.S.2d 605, affirmed 304 N.Y. 966, 110 N.E.2d 892; McClintic v. Sheldon, 269 App.Div. 356, 55 N.Y.S.2d 879, affirmed 295 N.Y. 682, 65 N.E.2d 328. It is well settled that a fiduciary who refuses to bring suit against a third party for the benefit of his cestui abuses his trust. In such event the cestui may maintain a...