Universal Film Mfg. Co. v. Copperman

• Decision Date: 10 November 1914
• Docket Number: 77.
• Parties: UNIVERSAL FILM MFG. CO. v. COPPERMAN et al.
• Court: U.S. Court of Appeals — Second Circuit

218 F. 577

UNIVERSAL FILM MFG. CO. v. COPPERMAN et al.

No. 77.

United States Court of Appeals, Second Circuit.

November 10, 1914

W. G Morse and J. L. Lotsch, both of New York City, for appellant.

S. F Frank, of New York City, for appellees.

Before LACOMBE, COXE, and WARD, Circuit Judges.

WARD Circuit Judge.

The Nordisk Film Company, a corporation of Denmark, composed an original written scenario of a play called the 'Great Circus Catastrophe,' and then composed a photoplay by means of an actual performance of the scenario, recorded by a moving picture camera on a negative photographic film, from which it afterwards took positive films in the customary manner, to be used in performing the play by throwing the pictures upon a screen by means of a moving picture machine. The company copyrighted neither the scenario nor the photoplay in England, as it might have done, but advertised and sold throughout Europe the positive films to any one who chose to buy, stipulating, however, on the bill rendered that it was a condition of sale that the film should not be resold or hired out for use, except in the country in which it was bought, nor exported, nor sold for export.

The defendants imported one of these positive films, which they purchased from a dealer in England, having first ascertained that there was no copyright for the photoplay in this country, and without notice of the stipulation that the same was not to be resold for export. This film they exhibited and hired out to others for the purpose of exhibition. Subsequent to the defendants' purchase the Nordisk Company copyrighted the photoplay in this country, receiving from the Copyright Office a certificate of registration as follows:

'This is to certify, in conformity with section 55 of the act to amend and consolidate the acts respecting copyright approved March 4, 1909, as amended by the Copyright Act of August 24, 1912, that the title, a description, and one print taken from each scene or act of the motion-picture photoplay not reproduced in copies for sale named herein, have been deposited in this office under the provisions of the said acts, and that registration for copyright for the first term of 28 years has been duly made in the name of Nordisk Film Co., Copenhagen, Denmark.

'Title of motion-picture photoplay: The Great Circus Catastrophe. Parts 1, 2, 3. By Nordisk Film Co.

'Title received Nov. 14, 1912.

'Description received Nov. 14, 1912.

'78 prints received Nov. 14, 1912.

'Entry: Class L. XXc, No. 110.'

This copyright the Nordisk Company subsequently assigned to the complainant, which seized the defendants' film under section 25 of the Copyright Act of March 4, 1909 (35 Stat. 1081, c. 320 (Comp. St. 1913, Sec. 9546)).

The title of the Nordisk Company in England was its common-law right of property in the intellectual conception of the scenario of the play expressed in words and in the intellectual conception of the photoplay expressed in actions. It could perform the written play itself, or license others to perform it, without prejudice to its common-law ownership, and so it could itself perform and license others to perform the photoplay in the same way. Palmer v. De Witt, 47 N.Y. 532, 7 Am.Rep. 480; Werckmeister v. American Lithographic Co., 134 F. 321, 69 C.C.A. 553, 68 L.R.A. 591, affirmed 207 U.S. 284, 28 Sup.Ct. 72, 52 L.Ed. 208, 12 Ann.Cas. 595.

When it sold a positive film, which was the only means of performing the play, it conferred the performing right on the purchaser and his assigns. No one, by virtue of that sale, would acquire the right to re-enact the play and take a negative of it, or make, if that could be done, a new negative from the positive film. This would be inconsistent with the Nordisk Company's common-law property in the photoplay and with the mere performing right which it had conferred on the owner of the film. But exercise of the performing right by one or by many purchasers of positive films would be entirely consistent with the Nordisk Company's common-law property in the play itself. The attempt, however, to annex a condition as to the use of the film after it was absolutely sold, was vain. Such conditions cannot be made to accompany an article throughout its changes of ownership. Bobbs-Merrill v. Strauss, 210 U.S. 340, 28 Sup.Ct. 722, 52 L.Ed. 1086, Dr. Miles Medical Co. v. John D. Park & Sons Co., 220 U.S. 373, 31 Sup.Ct.

376, 55 L.Ed. 502; Waltham Watch Co. v. Keene (D.C.) 202 F. 225, affirmed 209 F. 1007, 126 C.C.A. 668.

The Nordisk Company abandoned its common-law property in the United States when it took out the statutory copyright. Our law permitted it to copyright the scenario and the photoplay separately. It secured copyright for the latter under section 11 of the act of 1909, as amended in 1912 (Act Aug. 24, 1912, c. 356, 37 Stat. 488 (Comp. St. 1913, Sec. 9532)) by depositing in the office, not the scenario of the play, but only the title, with a description of it, and two photo prints of parts of each act. Sale of positive films after copyright was as consistent with its statutory ownership as was the sale of films before copyright with its common-law ownership. But neither it nor its assigns as owner of the statutory copyright in this country, could repudiate the license it had given before copyright to the purchaser of the film in England and his assigns. Therefore the defendants cannot be treated as infringers.

We are entirely satisfied with the disposition the District Judge made of the damages and special allowance to counsel resulting from the seizure. ^[1]

The decree is affirmed.

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Notes:

^[1] NOTE.

The following is the opinion of Hough, District Judge on the question of damages.

'A decision having been rendered dismissing this bill, the cause was again brought on before me (after notice to the surety on the seizure bond) in order to assess the damages caused to the defendant by the seizure, pursuant to the Copyright Act, of the film or reel containing the photoplay which is the subject of this suit. At the same time the matter of an allowance of a counsel fee to the successful party was laid before the court.

'The following matters of fact must first be decided, viz.: The condition of the film or reel at the time of seizure and at the present time; the nature of the employment of the reel at the time of seizure; the rate of such employment and its probable future employment.

'The reel was produced in court and examined by me. It is obviously in very bad physical condition. The celluloid is brittle and in many places cracked. This is in large part the result of its having been kept for a year without that special attention which is customary among business men. These articles should be kept in a damp and oily atmosphere. This has not been done.

'The reel, however, is otherwise in bad condition in that it is much torn on the edges. The holes for the sprocket wheels by which the reel is passed before the projecting machine are torn and frayed, and this condition could not be brought about merely by disuse in a dry atmosphere. The condition of the...