T.B. Harms & Francis, Day & Hunter v. Stern

• Decision Date: 14 December 1915
• Docket Number: 56.
• Citation: 229 F. 42
• Parties: T. B. HARMS & FRANCIS, DAY & HUNTER v. STERN et al. [1]
• Court: U.S. Court of Appeals — Second Circuit

229 F. 42

T. B. HARMS & FRANCIS, DAY & HUNTER v. STERN et al. ^[1]

No. 56.

United States Court of Appeals, Second Circuit

December 14, 1915

On Motion for Rehearing, January 5, 1916. [Copyrighted Material Omitted]

Max D Josephson, of New York City, for appellant.

Cohen &amp Richter, of New York City (Theodore B. Richter, of New York City, of counsel), for appellees.

Before LACOMBE, WARD, and ROGERS, Circuit Judges.

ROGERS Circuit Judge.

The plaintiff on February 20, 1915, secured copyright for a musical composition or song entitled 'Oh, Those Days.' The defendants on or about March 12, 1915, published the music of this composition, and placed it on the market for sale, in various music stores in the city of New York and throughout the different cities of the United States. The plaintiff thereupon began proceedings in the court below to protect its copyright against infringement, and asked an injunction, an accounting, and damages. The case was heard on the bill and answer and accompanying affidavits, and the injunction was refused, upon the ground that the plaintiff was in no position to ask for any equitable remedy.

The Constitution provides that:

'The Congress shall have power * * * to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. ' Article 1, Sec. 8.

In pursuance of the authority thus conferred Congress has enacted the Copyright Law, and has specified in the fifth section the writings for which copyright can be obtained, and among them '(d) Dramatic or dramatics-- musical compositions,' and '(e) Musical compositions.' Act March 4, 1909, c. 320, 35 Stat. pt. 1, p. 1076 (Comp. St. 1913, Sec. 9521). The statutes of the United States provide that the jurisdiction vested in the courts of the United States shall be exclusive of the courts of the several states 'of all cases arising under the patent right or copyright laws of the United States. ' Rev. St. 1878, Sec. 711; Comp. Stat. 1913, Sec. 1233; Judicial Code, Sec. 256.

The question which this case presents, therefore, is one within the exclusive jurisdiction of the federal courts, and concerning it no state court could pass a valid judgment. It is for the federal courts alone to pass, not only upon the right which the plaintiff asserts, but upon the defense which the defendants interpose to the suit.

The legal right which the plaintiff asserts is derived through an assignment by the composer of the musical composition herein involved. It appears that prior to February 10, 1915, Sigmund Romberg and Harold Atteridge delivered a musical composition to the Wintergarden Company, a New York corporation engaged in the business of producing and presenting musical comedies. All their right, title, and interest in the composition Romberg and Atteridge undertook to transfer to the Wintergarden Company. Romberg was the composer of the music and Atteridge was the author of the lyrics of the composition. The Wintergarden Company thereupon at once assigned to the plaintiff 'the sole and exclusive right, license, privilege, and authority to publish, copyright, print, reprint, copy, and vend in sheet music form' the musical composition or song entitled 'Oh, Those Day.' The right of an author in and to his unpublished manuscript is full and complete. It is subject to his disposal as much as any property of which he is possessed. He may make an absolute conveyance of it and invest his grantee with full right of property thereto, including the right to secure copyright of the production. Paige v. Banks, 13 Wall. 608, 614, 20 L.Ed. 709 (1871). The plaintiff, claiming to be the sole and exclusive proprietor and owner of the composition which had never been printed or published in this or in any foreign country, secured a copyright of the composition on February 20, 1915. It is not claimed that in securing the copyright it failed to comply with the requirements of the Copyright Act. It is admitted that the legal title is in the plaintiff.

That defendants, since the copyright was obtained, have published the music, but not the words, of the composition, is also conceded. The claim of the defendants is that they themselves are the owners and proprietors of the music of this composition, and they deny that they have committed, any wrongful act whatever in its publication. They rely upon a written agreement made between themselves and Romberg on August 11, 1913, in justification of what they have done. That contract provided that defendants should have 'the sole and exclusive production rights for all operettas, musical comedies, farces with music, etc., which Mr. Romberg may write during the course of the next five years. ' It also provided that defendants should have 'the sole and exclusive publishing rights of all compositions which he may write during' the same period. The contract bound the defendants to pay Romberg specific royalties on the publications. The defendants allege that the musical composition was written within the five-year period named in the contract, and that the plaintiff and the Wintergarden Company, before the respective assignments to them of this composition, had full knowledge of the contract and of defendants' right thereunder, and took subject thereto. That the plaintiff and the plaintiff's assignor had notice is not denied. But the fact of notice is unimportant, as the assignees would take subject to the equities whether with or without notice. This principle, however, would not prevent the vesting of the legal title to the composition in the plaintiff. Moreover, the legal title to a copyright vests in the person in whose name the copyright is taken out. It may, however, be held by him in trust for the true owner, and the question of true ownership is one of fact, dependent upon the circumstances of the case. Press Publishing Co. v. Falk (C.C.) 59 F. 324 (1894); Black v. Henry G. Allen Co. (C.C.) 42 F. 618, 9 L.R.A. 432 (1890); Lawrence v. Dana, Fed. Cas. No. 8136; 9 Cyc. 930. In Paige v. Banks, supra, the Supreme Court of the United States had under consideration an agreement made by Mr. Alonzo Paige, reporter of the New York Court of Chancery, in which he had agreed to furnish in manuscript the reports of that court for publication to certain law publishers, Gould & Banks. The agreement also provided that Gould & Banks should have the copyright of said reports. The court, speaking through Mr. Justice Davis, said:

'It is not covenanted that the publisher should take out the copyright, nor is there any express agreement for an assignment to them by Paige, if he should take it out. Undoubtedly the provision, that the publishers 'should have the copyright,' would authorize them to apply for it, and if Paige had taken it out in his own name it would have inured to their benefit. But, as between Paige and the publishers, the rights of the latter could not be estimated differently, whether they had or had not availed themselves of the provisions of the act.'

So in the case at bar the question is whether the plaintiff holds its copyright to this production subject to the equitable rights of the defendants. The plaintiff's right is not superior in any respect to the right of Romberg, if the latter had taken out the copyright in his own name; the plaintiff stands in Romberg's shoes. Could Romberg have obtained an injunction and damages against defendants, if Romberg had copyrighted this production?

At this point we are confronted by a decision rendered in the Supreme Court of New York in an action which the defendants brought against Romberg on the contract of August 11, 1913. That suit was one for specific performance of that contract and for an injunction; the defendants in this suit being the plaintiffs in that. The suit was brought against Romberg, the Shubert Theatrical Company, and Jacob J. Shubert, and was commenced on March 24, 1914. It asked for an injunction to restrain the defendants 'from producing, performing, or publishing any composition written by Romberg and delivered to the Shubert Theatrical Company and Jacob J. Shubert. ' It also sought, according to the affidavit presented to the court below, the specific performance of the contract of August 11, 1913. The counsel for the defendants in that action moved to dismiss the complaint, and the motion was granted on November 10, 1914; the court making the following conclusions of law: 'I. The relief sought by the plaintiffs in this complaint and the complaint itself rests entirely upon the foregoing contract, from which the rights of the parties must be ascertained.

'II. Assuming that the plaintiffs could establish as facts all that they have offered by their counsel to show by his offers of proof, nevertheless, under the allegations of the complaint, and under the contract as conceded, no cause of action for equitable relief can be predicated upon the allegations of the said complaint, and said allegations contained in said offers of proof, even if the latter be assumed to have been established as facts.

'III. The defendants' motion to dismiss the complaint upon the ground that the contract is inequitable and that it lacks mutuality of obligations and remedy must be granted, and the complaint must be dismissed, with costs.

'Let judgment be entered accordingly.'

The defendants in their answer in the case now before us have pleaded as their defense the contract upon which the New York court passed in entering the above judgment. They allege that by that contract--

'the said Sigmund Romberg did duly sell, assign, transfer, and set over, and vest in the defendants, the sole and exclusive right to print, publish, and sell all compositions which he might write during...