Orth v. Paramount Pictures

• Decision Date: 28 May 1942
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court
• Parties: LEW ORTH & another v. PARAMOUNT PICTURES, INC., & others.

311 Mass. 580

42 N.E.2d 524

LEW ORTH & another v. PARAMOUNT PICTURES, INC., & others.

Supreme Judicial Court of Massachusetts, Suffolk.

May 28, 1942

November 3, 1941.

Present: FIELD, C.

J., DONAHUE, QUA DOLAN, & RONAN, JJ.

Unfair Competition. Equity Pleading and Practice, Appeal, Report.

Appeals from interlocutory decrees confirming a master's report and denying a motion for final decree were not before this court upon a report under

G. L. (Ter.

Ed.) c. 214 Section 30, of the question whether on the master's report the plaintiff had established the defendant's liability.

Upon confirmation of a report of a master, to whom a suit in equity had been referred "to find the facts upon the question of liability of the defendants," and denial of the defendants' motion for a final decree dismissing the bill, the judge with the consent of the parties could treat such motion as raising the question, whether on the report the plaintiff had established the defendants' liability and could report that question to this court under G. L (Ter. Ed.) c. 214, Section 30.

An author of a short skit, which formed one of the numbers of several revues and was exhibited in theatres in various localities for about a year under a title not referred to in his advertising and brought to the attention of the public only through programs or announcements in theatres, was not subjected to unfair competition by the production and exhibition, seven years and fourteen years respectively after the exhibition of the skit had ceased, of motion pictures having the same title as that of the skit but otherwise bearing no resemblance to it and not employing the idea thereof.

BILL IN EQUITY, filed in the Superior Court on August 8, 1939. The suit was reported by Sheehan, J.

A. E. Whittemore, (E.

C. Mower with him,) for the defendants.

F. I. Rose, (M.

J. Zieman & H.

W. Finbury with him,) for the plaintiffs.

QUA, J. The plaintiffs seek to restrain the defendants from using the name "Million Dollar Legs" in connection with any motion picture or play and for an accounting of profits and damages, on the ground that the plaintiffs had first written and produced a "short play" bearing that title, and that the defendants are competing unfairly with the plaintiffs. The bill is not based upon infringement of copyright.

The cause was referred to a master to "find the facts upon the question of liability of the defendants or either of them" and "upon such determination" to file his report and to await the further order of the court. The defendants appealed from an interlocutory decree confirming the master's report and thereafter moved for a final decree dismissing the bill and appealed from an interlocutory decree denying the motion. Thereupon the judge signed a report to this court reciting that the master had heard the case on the question of liability only; that at the hearing before the judge of the defendants' motion for a final decree dismissing the bill all parties agreed that "the question of liability should be finally determined at this stage of the proceedings"; that he had denied the motion; and that, being of opinion that his ruling so affected the merits of the controversy that the accuracy thereof should be determined before further proceedings were had, at the request of the defendants he stayed all further proceedings except such as might be necessary to preserve the rights of the parties and reported "the question of law presented by . . . [his] said ruling."

On this record neither appeal is properly before us. Under the present practice appeals from interlocutory decrees cannot be entered here until after final decree in the Superior Court. Barnes v. Barnes, 291 Mass. 383 , 387. Leffler v Todd, 308 Mass. 243 , 245. See McCracken's Case, 251 Mass. 347, 350. This seems an almost necessary consequence of statutory provisions now embodied in G. L. (Ter. Ed.) c. 231, Section 135, introducing rigid requirements as to the time of each step in perfecting an appeal. See St. 1929, c. 265, Section 1, and its amendment by St. 1931, c. 219; Niosi v.

Leveroni, 274 Mass. 115 . If this were not so, as the statute now reads every interlocutory appeal would have to be fully completed and the papers printed and entered in this court, unless "for cause shown after hearing" the trial court should extend the time, no matter how inconsequential the subject of the appeal might become in the subsequent course of the litigation. A construction of the statute that would produce such a result would be hard to reconcile with the wording of the present c. 231, Section 135, would cause unnecessary expense to litigants, and is not to be adopted. The rule of practice existing before the statute of 1931 seems to have differed somewhat from the present rule as here stated, and statements appropriate to the former rule have been repeated in some of the cases since the passage of that statute. Fuller v. Chapin, 165 Mass. 1 . Hutchins v. Nickerson, 212 Mass. 118 , 120. Romanausky v. Skutulas, 258 Mass. 190 , 192. Siciliano v. Barbuto, 265 Mass. 390 , 393, 394. Knox v. Springfield, 273 Mass. 109 , 110. Rowe v. Bragg, 300 Mass. 298 , 299.

When this record was entered here the case was not ripe for final decree in the Superior Court because the judge's denial of the defendants' motion that a decree be entered dismissing the bill, as long as it stood unchanged, left the case open for further proceedings in that court. But the recitals in the report show that with the consent of all parties the judge treated the defendants' motion as raising the question whether on the master's report as it stood the plaintiffs had made out a case entitling them to an accounting for profits or an assessment of damages. The reference to the master had been limited with a view to raising this question before entering upon a possibly lengthy hearing as to profits or damages or both. We think that the judge could report this question under G. L. (Ter. Ed.) c. 214, Section 30, as a question arising upon the making of an interlocutory decree, and that the case is properly here on the report.

The plaintiffs had formerly been associated together in writing and producing musical comedy revues. In March, 1924, they copyrighted a short skit under the title "Million

Dollar Legs." The full text of this skit fills only about four pages of the printed record. It took about fifteen minutes to play. The central idea or "punch" consists in the partial disclosure on the stage of a pair of shapely legs which are supposed to be those of a female artist's model but which at the end of the skit are suddenly revealed to be the legs of a man. The words "million dollar legs" occur three times in the dialogue. People who saw the skit would associate those words with it. The idea was novel and was well received by the public. The skit was used from March, 1924, until April, 1925, as one of the numbers of a revue produced by the plaintiffs. The plaintiffs had approximately twenty-one different revues, each with a different title. Each revue contained from five to seven scenes and lasted about an hour. During most of the period from March, 1924, until April, 1925, the skit was played as one of the numbers of the revue entitled "Step Lively." In the latter part of the period it was played as one of the numbers of the revue "Keep Moving." "In the nineteen twenties it was usual to have a show consist of variety act, news reel and one big picture." The plaintiffs' advertising matter emphasized their own names, describing them as "Tip Top Merrymakers," and often included the names of the revues to be played, but in their advertising no reference was made to the skit "Million Dollar Legs." So far as appears the title of the skit was brought to the attention of the public only "by programs or by announcement through a master of ceremonies." Programs were used "in many of the theatres" -- how many does not appear. Where the show was "sold outright" no programs were used. In some of the theatres where no programs were used -- how many does not appear -- an announcer "informed the audience about the various acts." In this way between March, 1924, and April, 1925, the skit was exhibited as one number in a revue three times a day on one hundred twenty-nine days to a total of approximately three hundred twenty-two thousand five hundred people in about forty cities and towns in Indiana, Pennsylvania, New York, Connecticut,

Rhode Island Massachusetts, and Maine, and in Halifax, Nova Scotia, and Moncton, New Brunswick. Most of the presentations were in the smaller cities and towns, although Philadelphia, Boston, Worcester, and Springfield were included. Usually the skit was exhibited in motion picture theatres. From April, 1925, until August 8, 1939, when this suit was brought, the plaintiffs "did nothing by way of exhibition or otherwise to inform the public of the existence of the playlet `Million Dollar Legs,' and there was no evidence that others exhibited it to the public." The plaintiffs have not engaged together in the production or exhibition of shows since 1926. Coleman continued in business until 1929, and apparently neither of the plaintiffs was in the...