New Fiction Pub. Co. v. Star Co.

• Decision Date: 15 February 1915
• Parties: NEW FICTION PUB. CO. v. STAR CO.
• Court: U.S. District Court — Southern District of New York

220 F. 994

NEW FICTION PUB. CO. v. STAR CO.

United States District Court, S.D. New York.

February 15, 1915

John T Sturdevant, of New York City, for the motion.

Pace &amp Stimpson, of New York City (Frank D. Wynn, of New York City of counsel), opposed.

MAYER District Judge.

The defendant has moved under equity rule 29 to dismiss the bill of complaint, upon the ground that upon the face of the bill no cause of action against defendant is disclosed, and that the court is without jurisdiction to entertain the suit. The parties are New York corporations, with their places of business in the borough of Manhattan, city of New York.

The sole question is whether plaintiff is the assignee of or merely the licensee under a copyright, and, as this question is said to be important, a full statement of the facts as disclosed on the face of the bill seems to be desirable. On July 9, 1913, one Edward Goodman, being the author and proprietor of an unpublished drama entitled 'En Deshabille,' copyrighted it as provided by the Copyright Act. Before copies of the drama were produced for sale Goodman entered into an arrangement with plaintiff whereby, as plaintiff claims, he assigned to plaintiff the 'serial rights' in and to the drama. Plaintiff paid Goodman $50 by check, and Goodman indorsed the check. The check, with its indorsement, is the evidence upon which plaintiff relies in asserting an assignment, and is as follows:

'No. 697.

New York, Dec. 5, 1913.

'The Mutual Bank, 49-51 West 33d Street: Pay to the order of Edward Goodman ($50 00/100) fifty & 00/100 dollars.

'The New Fiction Publishing Company, 'W. M. Clayton, President.'

On the margin of said check:

'The New Fiction Publishing Co., 16 East 33d St., New York.'

Indorsed:

'For all serial rights to one act play, En Deshabille. For deposit. Edward Goodman.

'Indorsement correct. The Fifth Avenue Bank of N.Y.

'Received payment through New York Clearing House, Dec. 6, 1913. Addition The Fifth Avenue Bank of New York.'

The words 'serial rights' have, as plaintiff alleges (and this allegation must be accepted for the purposes of this motion), a definite meaning among publishers, and are understood to comprehend all publishing rights, including magazine and newspaper publishing rights, and excepting only book, dramatic, and moving picture scenario rights.

Prior to the transfer of the 'serial rights,' viz., about September 16, 1913, Goodman sold to the Managers' Producing Company the right to perform the play on the stage, and thereafter this Managers' Producing Company gave performances at various theaters in the United States and Canada, and, because of the interest aroused by the play, the right to print and publish the drama in a magazine became of value.

Plaintiff is the proprietor of a monthly magazine called 'Snappy Stories,' and as 'En Deshabille' could be readily printed in one issue, it was so printed in the March, 1914, issue. Before that, however, namely, on Sunday, January 18, 1914, and without the consent of Goodman or plaintiff, substantial parts of Goodman's play were published in the New York American, a newspaper owned by defendant.

The allegation is that this publication in the New York American satisfied the public desire to read the play and thereby diminished the sales and profits of plaintiff's magazine. The relief asked for is that prescribed by section 25 of the Copyright Act in cases of infringement, as follows:

'(1) For an injunction restraining the infringement; (2) for destruction of infringing prints and matrices; (3) for an accounting and payment of all profits ensuing from the sale of the copyrighted material; and (4) for a penalty of $1.00 for each and every infringing copy made or sold by or now in the possession of defendant and the defendant is required to make discovery of the number of such copies made or sold by it and now in its possession.'

It is asserted that the March, 1914, issue of 'Snappy Stories' was duly copyrighted in February, 1914; but that fact is of no consequence and adds nothing to plaintiff's case, in view of the previous copyright of Goodman.

At the outset, it may be well to clear away some misapprehensions. If the transaction described constitutes an assignment of the copyright, it was not necessary for the purposes of this cause of action that the assignment should be recorded as provided in section 44 of the act. That section protects subsequent purchasers or mortgagees for value, and is akin in principle to the filing or recording acts, which relate to bills of sale or chattel mortgages. As against infringers, an assignee would have a cause of action, irrespective of the recording provisions of the act.

Further, the check transaction, although informal, clearly shows the intention of Goodman to sell to plaintiff all rights to publish in magazines and newspapers.

So that the sole question, as indicated supra, is whether plaintiff is an assignee or licensee. When...