McCaleb v. Fox Film Corp.

• Decision Date: 20 May 1924
• Docket Number: 4078.
• Citation: 299 F. 48
• Parties: McCALEB v. FOX FILM CORPORATION.
• Court: U.S. Court of Appeals — Fifth Circuit

299 F. 48

McCALEB v. FOX FILM CORPORATION.

No. 4078.

United States Court of Appeals, Fifth Circuit.

May 20, 1924

E. J Bowers, of New Orleans, La., for appellant.

George Denegre, Victor Leovy, and Henry H. Chaffe, all of New Orleans, La. (Harry McCall and J. Henry Bruns, both of New Orleans, La., on the brief), for appellee.

Before WALKER and BRYAN, Circuit Judges, and CALL, District Judge.

WALKER Circuit Judge.

This is an appeal from a decree dismissing a bill in equity filed by the appellant. The bill charged that a play or dramatic composition, entitled 'The Scarlet Letter,' which was copyrighted by the appellant in October, 1913, was infringed by the use or production by the appellee of a scenario or photoplay having the same title, prayed an award to appellant of the amount of damages sustained by him in consequence of such infringement, and that appellee be required to account for profits alleged to have been realized by it therefrom and be enjoined from showing or exhibiting the alleged infringing composition. The subject of the copyright obtained by appellant in 1913 was a revised version of the play having the same title which was written by the appellant in 1889 and was copyrighted in 1893. Both appellant's play and the scenario or photoplay mentioned were based on Nathaniel Hawthorne's book having the same title, and both in large part consisted of matter copied from that book. The copyright on that book expired many years ago. The basis of the charge of infringement is the alleged use in the scenario or photoplay of parts of appellant's play which were not traceable to the book, which in other respects was followed.

There is a suggestion in the argument of counsel for the appellant that the provision of the statute (section 6, 35 Stat. 1077 (Comp. St. Sec. 9522)) that dramatizations of works in the public domain shall be regarded as new works subject to copyright operates to give to the copyrighting of appellant's play the effect of conferring on him the right to prevent another's use of so much of Hawthorne's book as was used in appellant's play. The lack of merit in this contention is demonstrated by the express language of that part of the statute which is to the effect that such a copyright as that which was acquired by the appellant shall not be construed to imply an exclusive right to such use of the original work. The appellant has no right to complain of another's use of the title or contents of Hawthorne's book. His exclusive right embraces nothing except copyrighted matter of which he is the proprietor. The statute does not enable him to acquire an exclusive right to what formerly was, but has ceased to be the subject of private ownership.

In quite a number of particulars appellant's play deviates from the book. It contains incidents, stage business thoughts, and suggestions not found in the book. In appellant's behalf it is claimed that the scenario so far similarly deviates from the book as to require the conclusion that it involved an unauthorized imitation and appropriation of new matter contained in the play. It is not to be denied that there is ground for the contention that the similarities and coincidences are such as not to be satisfactorily explainable on the theory that they were due to the authors of the play and of the scenario by chance happening to have and use practically identical conceptions, and not at all to suggestions made by the play to the writer of the scenario. In view of the grounds upon which we have concluded that the case should be disposed of, it may be assumed, without being decided, that the evidence adduced showed that appellant's copyright was infringed by appellee.

The last use of the scenario by the appellee prior to the filing of the bill in May, 1921, was on or about February 19, 1919, more than two years before the suit was brought. The present copyright statute (35 Stat. 1075 (Comp. St. Sec. 9517 et seq.)) contains no provision as to the time within which remedies for infringement must be prosecuted. This being so, actions at law for infringement of copyright are governed by the limitation prescribed for the class of actions to which they belong by the law of the state in which the action is brought. Brady v. Daly, 175 U.S. 148, 20 Sup.Ct. 62, 44 L.Ed. 109. Courts of equity, in cases of concurrent jurisdiction, consider themselves bound by the statutes of limitation which govern actions at law. Baker v. Cummings, 169 U.S. 189, 18 Sup.Ct. 367, 42 L.Ed. 711.

This suit invoked the exercise of a concurrent jurisdiction, in that it sought a recovery of damages suffered due to the alleged infringement. For the recovery of such damages appellant had a remedy at law in an action for damages. 38 Stat. 113 (Comp. St. Sec. 9526). The suit was not kept from being one which involved the exercise of a concurrent jurisdiction, with the result of making the state limitation or prescription law applicable, by the circumstance that it sought, in addition to an award of damages, the granting of equitable remedies, an accounting and an injunction, as means of better enforcing the purely legal right to damages for infringement. Hall v. Law, 102 U.S. 461, 26 L.Ed 217; 21 Cyc. 252, 254. As to the claim of damages for an...