State ex rel. Clemens v. Witthaus

• Decision Date: 13 March 1950
• Docket Number: No. 41729,41729
• Citation: 360 Mo. 274,228 S.W.2d 4
• Parties: STATE ex rel. CLEMENS et al. v. WITTHAUS, Circuit Judge.
• Court: Missouri Supreme Court

Page 4

228 S.W.2d 4

360 Mo. 274

STATE ex rel. CLEMENS et al. v. WITTHAUS, Circuit Judge.

No. 41729.

Supreme Court of Missouri, en Banc.

March 13, 1950.

Walter Wehrle, Clayton, Wendell Berry, St. Louis, for relators.

Alfred W. Petchaft, St. Louis, for respondent.

DALTON, Judge.

This is an original proceeding in prohibition to prevent respondent, a circuit judge of St. Louis County, from compelling relator Cyril Clemens to comply with an order entered in a cause entitled Thomas G. Chamberlain et al. v. Cyril Clemens et al., then pending in the circuit court of said county and before said circuit judge. The order required relator Clemens to produce at a designated time and place in the City of St. Louis 'on the taking of depositions 'any and all letters, manuscripts, other documents, or copies thereof, which he may have in his possession written by, or purporting to have been written by, Samuel L. Clemens (Mark Twain).''

Respondent's return to our preliminary writ admits that, when the petition for the writ was filed in this court, the cause in which the questioned order was entered was then pending before him in the circuit court of St. Louis County; and that the purpose of the action was to obtain a permanent injunction against the defendants therein, relators herein, from printing, copying, publishing or republishing or in any manner producing or reproducing certain letters written by Samuel L. Clemens and for other relief. Since one of the principal issues presented is whether the documentary evidence ordered produced at the taking of the depositions was relevant and material to the issues in the pending cause in which the order was entered, we must look to the allegations of the petition in that cause.

The petition alleged that the plaintiffs 'are the owners and proprietors of all the said literary rights and publication rights in the writings of said Samuel L. Clemens which were not and have not been published with the permission or authority of said Samuel L. Clemens and which were not and have not been published with the permission or authority of his descendants or his executors or trustees. Plaintiffs herein have made, and are how making determined and intensive efforts to discover and collect any and all letters so written, or caused to be written, by said Samuel L. Clemens, with the intent of creating an official collection of such letters in order to preserve for posterity the inherent literary and historical merit therein. * * * Said successor trustees and said Clara Clemens Samoussoud have joined in giving consent to, and permitting, the publication of such letters comprising the above-mentioned collection in book form. * * * In furtherance of the publication of said letters, the successor trustees entered into a contract with Harper & Brothers, plaintiff herein, for the publication of such book and, pursuant to such contract, Harper & Brothers have expended substantial sums of money preparing for the publication and distribution thereof. * * *

'In the months of January and February, 1949, defendants advised and notified various newspapers, journals, and periodicals in the United States that they were in the process of editing an alleged official collection of Mark Twain letters, although the publication of any letters written, or caused to be written, by said Samuel L. Clemens in the possession of the defendants was not authorized or consented to by the plaintiffs. * * *

'Plaintiffs have protested against such publication by defendants and have accordingly notified defendants of their property rights in and to any such letters in the custody of defendants, but defendants threaten to continue and proceed therewith.

'Such publication, if accomplished by defendants, will injure the plaintiffs in their property rights in and to the letters of Samuel L. Clemens; will injure the name and reputation of Samuel L. Clemens; will cause severe financial damage to the plaintiffs * * * and such publication will cause irreparable injury to the plaintiffs and to the reputation of said Samuel L. Clemens as an author; and the plaintiffs have no adequate remedy at law to prevent or terminate the same.' (Italics ours.)

In the briefs filed in this court, respondent construes the above action as 'a common-law copyright infringement suit * * * wherein it is alleged that the defendant, Cyril Clemens, * * * has in his possession a group of unpublished letters, or the like, written by Mark Twain, and that the plaintiffs, by reason of a recited chain of title and interest, are the owners of the common-law copy rights in such unpublished material * * * that the defendants, now the relators herein, threaten to publish such material in violation and infringement of the asserted common-law copyright, and an injunction is being sought against such publication.'

In support of plaintiffs' alleged common-law copyright in such unpublished material the following cases are cited: Denis v. Leclerc, 1 Mart. O.S., La., 297, 5 Am.Dec, 712; Rice v. Williams, C.C.E.D. Wis. 1887, 32 F. 437; Folson v. Marsh, C.C. Mass., 1841, Fed.Cas. No. 4,902, 2 Story 100; Woolsey v. Judd, N.Y. 1855, 4 Duer 379; Grigsby v. Breckinridge, Ky. 1867, 2 Bush. 480, 92 Am.Dec. 509; Baker v. Libbie, 1912, 210 Mass. 599, 97 N.E. 109, 37 L.R.A., N.S., 944, Ann.Cas. 1912D, 551; King et al. v. King, 1917, 25 Wyo. 275, 168 P. 730; Moore v. Ford Motor Co., D.C., S.D.N.Y. 1928, 28 F.2d 529. In this connection it is said: 'The common-law copyright, or right of first publication, is a right different from that of ownership of the physical paper; the first of those rights does not necessarily pass with the second; and the separate common law copyright or control of the right to reproduce belongs to the artist or author until disposed of by him and will be protected by the courts.' Also see Kurfiss v. Cowherd, 233 Mo.App. 397, 121 S.W.2d 282, 286; 18 C.J.S., Copyright and Literary Property, Sec. 4 et seq., p. 139; 34 Am. Jur., Literary Property, Secs. 4, 14 and 20.

It appears from relators' petition herein that relators have entered their appearance in the mentioned cause in the circuit court before respondent and that, after the questioned order was entered and served upon defendant Cyril Clemens, relators filed in said court and presented to respondent a motion to set aside the order requiring the production of the mentioned documentary evidence. The grounds assigned in the motion included (1) that defendants had had no notice of the application for the order; (2) that the order amounted to the taking of property without due process and constituted an unreasonable search and seizure in violation of the state and federal constitutions; (3) that plaintiffs had no right, title or interest in and to the evidence required to be produced; (4) that the order would permit plaintiffs to acquire the 'contents of letters without paying one cent for same'; (5) that the order constituted an attempt to take defendant's property without compensation; and (6) that if the order stood, plaintiffs would not need to try the suit, because having secured the contents of the letters, the items of value, the documents would have little value.

The motion to set aside was overruled and, at the suggestion of the court and by stipulation of the parties, an order was entered that, upon the production of the documentary evidence ordered to be produced, the plaintiffs waived the right to read such evidence into the depositions or to have it attached to the depositions, but that such waiver should be construed as effective only in connection with the taking of the said depositions.

The parties concede that respondent is without jurisdiction to require the production of documentary evidence at the taking of depositions unless such evidence is relevant and material to the issues involved in the pending cause in which the depositions are to be taken. On this issue both parties cite State ex rel. Thompson v. Harris, 355 Mo. 176, 195 S.W.2d 645, 647; State ex rel. Cummings v. Witthaus, 358 Mo. 1088, 219 S.W.2d 383, 8 A.L.R.2d 1124; State ex rel. St. Louis Union Trust Co. v. Sartorius, 351 Mo. 111, 171 S.W.2d 569; and State ex rel. Williams v. Buzard, 354 Mo. 719, 190 S.W.2d 907.

Relators, however, insist (1) that the burden of proving the materiality of the documents sought to be produced is upon the respondent and the plaintiffs in the cause pending before respondent; (2) that relator Cyril Clemens was entitled to notice of the application for the questioned order; (3) that the application for the order should have designated the specific documents sought to be produced; (4) that the application should have alleged the materiality of the specific documentary evidence sought to be produced; (5) that the application should have been verified; (6) that Sec. 142, Laws 1943, p. 396, Mo.R.S.A. Sec. 847.142, under which the order was entered is unconstitutional and void under Art. I, Secs. 10 and 15 of the Constitution of Missouri 1945, Mo.R.S.A., and the Fourth Amendment to the Constitution of the United States because the section does not require that the documentary evidence required to be produced be material to the issues in the case, or that notice be given of the making of the application to produce; (7) that the order of respondent, as entered, was an excessive exercise of judicial authority; and (8) that respondent was without power or authority to order a resident of St. Louis County to transport documentary evidence into another county to appear before a notary public with such documentary evidence for the purpose of being examined.

Section 142, supra, provides, that 'upon order of the court in which a cause is pending a subpoena may command the production of documentary evidence on the taking of a deposition and the court may also order a party to produce documentary evidence on the taking of a deposition.' Respondent was admittedly attempting to proceed under the last clause...