Miller Music Corporation v. Charles N. Daniels, Inc.

• Decision Date: 31 December 1957
• Citation: 158 F. Supp. 188
• Parties: MILLER MUSIC CORPORATION, Plaintiff, v. CHARLES N. DANIELS, Inc., Defendant.
• Court: U.S. District Court — Southern District of New York

158 F. Supp. 188

MILLER MUSIC CORPORATION, Plaintiff, v. CHARLES N. DANIELS, Inc., Defendant.

United States District Court S. D. New York.

December 31, 1957.

Abeles & Bernstein, New York City, for plaintiff. Julian T. Abeles, Arnold J. Bernstein, New York City, of counsel.

Lewis A. Dreyer and Jack M. Ginsberg, New York City, for defendant. Milton A. Rudin, Los Angeles, Cal., of counsel.

FREDERICK van PELT BRYAN, District Judge.

This is an action for copyright infringement by one music publisher against another. Plaintiff claims to be the owner of a partial interest in the renewal copyright of the song "Moonlight and Roses," and seeks the enforcement of its rights as such owner. Defendant alleges that it is the owner of the entire copyright, including the partial interest claimed by plaintiff, and counterclaims for enforcement of its rights.

A United States copyright is valid for twenty-eight years from the date of first publication. 17 U.S.C. § 24. During the last year of the original twenty-eight year term an application for renewal for an additional twenty-eight years may be made under 17 U.S.C. § 24 by "the author of such work, if still living, or the widow, widower, or children of the author, if the author be not living, or if such author, widow, widower, or children be not living, then the author's executors, or in the absence of a will, his next of kin * * *."

The question presented here is whether the assignment of his renewal rights by Ben Black, one of the co-authors of the song, to plaintiff prior to the time when they accrued at the commencement of the last year of the original term of the copyright was defeated by the author's death before the period commenced within which renewal could be made. There seem to be no reported cases which specifically pass on this question and it appears to be one of first impression.

In Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643, 63 S.Ct. 773, 87 L.Ed. 1055, the Supreme Court had before it for the first time the question of whether under the Copyright Act of 1909 an author may validly assign his renewal rights to a copyright prior to the time he actually acquires or may acquire them during the last year of the original copyright term. The court held that such an assignment was valid and binding as against the author or his subsequent assignees if the author survives until the twenty-eighth year of the original copyright term, the year in which his renewal rights accrued. However, since the author was still alive at the time the renewal period commenced, Fisher left open the question presented here of whether such an assignment by the author could defeat the statutory right to renew which is expressly given to his widow and children, executor or next of kin by 17 U.S.C. § 24 if the author dies before the commencement of the twenty-eighth year of the original term.

The facts have been stipulated, and are as follows:

"Moonlight and Roses" was written by Ben Black and Charles N. Daniels some time prior to 1925. The authors assigned the composition and the right to secure a copyright therein to Villa Moret, Inc., a music publisher, and the latter obtained a copyright on January 10, 1925. This copyright expired on January 9, 1953.

On October 3, 1946 Ben Black assigned his partial interest in the renewal copyright to the plaintiff, Miller Music Corporation. The instrument of assignment did not by express language purport to bind Black's testamentary representatives. The assignment included a power of attorney under which the plaintiff was authorized to file a renewal application in Ben Black's name. On October 14, 1946 the plaintiff obtained separate assignments from David, Jules and Isidore Black, brothers of Ben Black, of any respective interests which they might have in the renewal copyright. All the assignments contained covenants by the assignors to make and execute any and all further instruments, documents and writings for the purpose of perfecting and confirming all rights and interests in the renewal copyright in the plaintiff. Each was duly recorded in the Copyright Office on October 27, 1946.

Ben Black died, a resident of California, on December 26, 1950, before the commencement of the last year of the original copyright term when the right to apply for renewal first accrued. He left no surviving widow or children. In his will he named his brother David Black, and the Bank of America, as co-executors. The Bank failed to qualify and David Black became the sole executor.

The will, which was admitted to probate in the Superior Court of the State of California on February 15, 1951, made no mention of the renewal copyright or of the 1946 assignment to plaintiff. The residuary estate was left to the testator's nephews and nieces, the children of various of his brothers.

On January 16, 1952, during the last year of the original copyright term, David Black, as executor of the estate of Ben Black, applied to the Copyright Office for renewal of the copyright in "Moonlight and Roses" and received a certificate of renewal registration from the Register of Copyrights.

On March 24, 1952 the California Superior Court issued a decree ordering the distribution of all the property in the estate. The decree specified that all the rights in "Moonlight and Roses" were included in the distribution to the nephews and nieces as residuary legatees. The latter assigned all their right, title and interest in the composition to the defendant by written assignment dated May 1, 1952. Upon petition of David Black as executor the assignment was approved by the Superior Court of California on June 23, 1952. Subsequently, a copy of the assignment, signed by David Black as executor, as well as by the assigning nephews and nieces, was filed with the Copyright Office.

The defendant has also acquired the renewal rights of the co-author, Charles N. Daniels, through an assignment from Daniels' children. There is no question as to the ownership of the Charles N. Daniels interest. The only dispute is as to who owns the Ben Black interest.

Plaintiff, asserting its partial ownership, demands that defendant be enjoined from infringing its rights under the copyright renewal; that defendant be compelled to assign to the plaintiff all the right, title and interest of author Ben Black which it claims; and that defendant be required to pay such damages as plaintiff has sustained and to account for all gains and profits derived by such infringement. Defendant counterclaims for substantially the same relief and demands, in addition, that plaintiff be required to deliver up for destruction all infringing copies and all plates, moulds and other matter used for making such infringing copies. Both sides have moved for summary judgment on the stipulated facts. The only question presented is one of law as to the enforceability of the respective assignments under these circumstances.

Defendant's first contention is that the decree of final distribution by the California probate court is conclusive as to the ownership of the renewal copyright. This contention may be disposed of briefly. Section 1021 of the Probate Code of California provides:

"§ 1021. Decree of distribution. In its decree, the court must name the persons and the proportions or parts to which each is entitled, and such persons may demand, sue for, and recover their respective shares from the executor or administrator, of any person having the same in possession. Such order or decree, when it becomes final, is conclusive as to the rights of heirs, devisees and legatees."

The California courts have consistently held that one who claims as a stranger to the estate or adversely to the estate rather than as an heir, devisee or legatee, will not be bound by a decree of distribution since the jurisdiction of the probate court is limited to rights granted in privity with the estate and does not extend to the rights or titles of adverse claimants. In re Estate of King, 199 Cal. 113, 248 P. 519; In re Estate of Cropper, 83 Cal.App.2d 105, 187 P.2d 780; In re Estate of Kurt, 83 Cal.App.2d 681, 189 P. 2d 528.

Plaintiff's claim is based on an assignment executed during the author's lifetime. As such, the claim is one adverse to the estate under the California cases just cited. Plaintiff does not claim as an heir, devisee or legatee and the California probate decree does not constitute a binding adjudication of its rights.

Determination of rights of the parties here must rest on the effect to be given to Section 24 of the Copyright Act. The language of that section makes no reference to an assignment by an author of renewal rights which might accrue in the future. Until the Supreme Court resolved the question in Fred Fisher Music Co. v. M. Witmark & Sons, supra, it was far from clear that the author could, prior to the last year of the original term, make any valid assignment at all of his renewal rights. But even though the validity of such assignments, if the author remains alive, has been established, it remains to be determined whether an assignee acquires a vested interest in the renewal rights or merely an interest contingent on the author's survival until commencement of the twenty-eighth year of the original term when his renewal rights first accrue.

The statute provides that if the author is not alive during the last year of the original term, designated persons, viz., the widow and children, executor, or next of kin, in the order named, may apply for renewal in the author's stead. Defendant contends that since the designated persons, including the executor, derive their interest solely and directly from the statute, the author may not, by prior assignment, deprive any of them of the rights which the statute expressly grants them.

The rights granted by the successive Copyright Acts passed by Congress, including the presently subsisting Act of 1909, are created solely and entirely by the statute and have no existence...