Thoughts of a Layman II: Authorship and Ownership

The summary given chapter four of Intellectual Property: Patents, Trademarks, and Copyrights, Second Edition authored by Richard Stim that summarizes the case involving a song entitled “The Bird on Nellie’s Hat” is to a degree misleading. There were in fact three decisions handed down on 26 January 1944 involving two separate causes of actions on three related cases of alleged copyright infringement.

In January 1941 Edward B. Marks Music Corporation filed three separate complaints against Jerry Vogel Music Company alleging that the Vogel Music Company infringed their renewed copyrights to the following items: One, the music complementing the musical composition “I Wonder Who’s Kissing Her Now;” Two, the music accompanying the musical composition “The Bird on Nellie’s Hat;” Three, the lyrics associated with the musical composition “December and May.”

During the course of the litigation the plaintiff, Edward B. Marks Music Corporation filed with the United States District Court for the Southern District of New York, motions requesting summary judgments in each of the cases in their favor. In the case involving “December and May” the plaintiff also requested a permanent injunction prohibiting future infringements, and requesting an award for damages based on past infringements.

On 13 January 1942 District Judge Vincent Leibell issued his rulings in the three cases which, were styled as Marks Music Corp. v. Vogel Music Co., 42 F.Supp. 859, 52 U.S.P.Q. 219 (S.D.N.Y. 1942). In the first action involving the music related to the musical “I Wonder Who’s Kissing Her Now;” Judge Leibell made the following determinations: First, even though the original copyright was obtained prior to 1 July 1909, the renewal of the copyright was governed by the provisions of the Copyright Act of 1909, in accord with section twenty-four of the Copyright Act of 1909 which provided for copyright renewals of works prior to the date on which, the Act entered into force. Second, Judge Leibell held that the renewal of a copyright pertaining to a part of the whole (a subsistent copyright) constituted a renewal of the whole work. Third, the judge adjudged that the original musical composition formed a joint work of which, was not dissolved in the renewed copyright. Fourth, Judge Leibell determined that when a co-author renews a copyright in his or her own name, the author requesting the renewal in effect becomes the constructive trustee responsible for safeguarding the whole work and protecting the interests of the non-renewing partner. Last, Judge Leibell maintained that the controversy surrounding transfer of rights by the original composer were issues of fact to be determined at trial, and accordingly denied the plaintiff’s motion for a summary judgment

Moving on to the second complaint concerning the music of the musical composition entitled “The Bird on Nellie’s Hat,” Judge Leibell held that the dearth of facts underlying the cause of action prevented from properly applying the relevant principles of copyright law enunciated elsewhere in the opinion in relation to the other two cases. However sufficient evidence had been presented by both parties so that on the basis of the evidence presented Judge Leibell was able to issue two holdings. First, the judge found that questions still remained regarding the issue of common design and collaboration that needed to be adjudicated at trial. Second, the death of the composer Arthur Lamb raised issues of fact relating to the assignment and transfer of Lamb’s copyright that needed to be resolved at a trial. For the foregoing reasons Judge Leibell denied the plaintiff’s motion requesting summary judgment in this case.

Having disposed of the first two actions Judge Leibell turned his attention to the third complaint which, was predicated on alleged infringements of the lyrics associated with the musical composition named “December and May.” First, the judge held that even though the music and lyrics for “December and May” were written separately by Edward Marks and William Loraine respectively both composed their work with a similar design and purpose of intent as demonstrated by the fact that both Marks and Loraine submitted their works to Frank Harding. Marks had instructed Frank Harding to find a composer to write music that would accompany the lyrics, while, Loraine wrote the music to accompany Marks’ lyrics which, had been given to him by Frank Harding. After both were completed Frank Harding published finished composition as a unit. The common purpose and intention pre-existed the publication of the music and lyrics as a unit, in the sense that both Marks and Loraine possessed a similar intent even though they were unknown to each other. This unifying intent the judge argued was sufficient to demonstrate that collaboration existed and that Marks and Loraine could be construed as co-authors and collaborators because, both were united by their intent.

Second, Judge Leibell held that when the plaintiff renewed the copyright, the renewed the copyright like the original covered the unified musical composition, since neither, the music or lyrics when originally published were copyrighted independently of the other, as such the renewed copyright could not be applied separately. Third, the judge held that Marks renewal of the copyright on the composition conferred upon him the responsibilities of a constructive trustee responsible for safeguarding the whole work and protecting the interests of the non-renewing partner. As a consequence of his holdings Judge Leibell denied the plaintiff’s motion for a summary judgment while refraining from issuing the injunction and imposing damages.

Nine months later, Judge Lovett sitting in the Southern District handed down his judgments following the trial on the matters involving “The Bird on Nellie’s Hat,” and “December and May,” on 19 October 1942. Judge Lovett concurred with Judge Leibell’s earlier findings. On the matter of “December and May, Judge Lovett wrote the following:

Two men producing a musical composition jointly are nonetheless coauthors and owners though they labor at different times, without conference or consultation, and though they may remain strangers each other. If one produces lyrics or music intending that they shall be combined with the production of another who shall compose the music or write the lyrics (as the case may be) to make the composition complete, the work of both is necessary, the work of one is complementary to the work of the other, the work of one must be fitted, adjusted, even morticed, to the work of the other, to make the composition a finished product and marketable. One should not be allowed to take advantage of the other when the copyright is renewed. The renewal should be, and is, for the benefit of both. There can be bit one subsisting copyright of a single version, of a single work. Silverman v Sunrise Pictures Corp., 2 Cir., 273 F. 909(3), 914, 19 A.L.R. 289; Maurel v. Smith, D.C., 271 F. 211 Marks Music Corp. v. Vogel Music Co., supra. I think the line of co-authorship is to be drawn not when the co-laborers worked but according to the original design Joel Chandler Harris did not originally write his Uncle Remus tales with any intention of having them illustrated when they were collected and put in book form (Harris v. Coca-Cola Co., 5 Cir., 73 F.2d 370); nor did Shakespeare write his Mid-Summer’s Night Dream, nor David the 23d Psalm, intending that they should be set to music and produced as musical compositions under copyrights. But here all the parties, authors of lyrics and authors of music, intended that the finished product should be a musical composition consisting of the words set to music-that was the thing they intended to be marketed, and, naturally they wanted the monopoly a copyright gives for a limited time. It would be grossly inequitable, it seems to me, to let one of the two authors renew the copyright, attempt to limit it to the thing he wrote, and thereby exclude his co-owner from any participation in the profits arising from the new grant, on the theory that the product of the one renewing is the only thing the renewal copyright protects and the work of the other has become the property of the United States and therefore of the public. The practical result would be, so far as the musical composition as unit is concerned, to give the one co-owner renewing a monopoly for the new term upon the products of both. The better view seems to me to be that the one renewing holds for the benefit of both , either as co-owners or as trustee Marks Music Corp. v. Vogel Music Co., supra. 42 F.Supp. at page 864, Marks Music Corp. v. Vogel Music Co., 47 F.Supp. 490, 55 U.S.P.Q. 489 (S.D.N.Y. 1942)

In the case centered on the musical composition “December and May” Judge Lovett denied the plaintiff’s request for a permanent injunction against the defendant for two reasons: One, the non-renewing co-author was still alive; two he validly licensed some of his rights to the defendant. Therefore, the defendant possessed a legitimate interest that required protection

Turning to the controversy surrounding the musical “The Bird on Nellie’s Hat” the Judge focused his attention on the questionable assignment of copyright that occurred in the aftermath of the death in 1928 of the original composer Arthur Lamb. At the time of his death Arthur Lamb left no will and no information concerning any heirs. Several years after the copyright was renewed the Defendant produced a man they argued was Cecil Lamb, the brother of the deceased Arthur Lamb, and who by virtue of their sibling relationship should be construed as Arthur Lamb’s heir and the successor to his rights under the renewed copyright. During the course of the trial no proof was submitted to the judge that conclusively proved the claims of the defendant regarding Arthur Lamb’s heirs and successors as Judge Lovett noted in his opinion. In light of the defendant’s failure to conclusively prove their claims. Judge Lovett ruled that the defendant was a stranger to the copyright covering the musical composition “The Bird on Nellie’s Hat.” For the forgoing reasons Judge Lovett issued the permanent injunction requested by the plaintiff preventing the defendant from infringing The Judge also denied the defendant’s motion requesting the case be reargued. Additionally, Judge Lovett denied a subsequent motion made by the defendant requesting re-argument, Marks Music Corp. v. Vogel Music Co., 47 F.Supp. 490, 55 U.S.P.Q. 489 (S.D.N.Y. 1942).

Following the trial before Judge Lovett only the complaint concerning “I Wonder Who’s Kissing Her Now” remained to be tried. The trial occurred in the District Court for the Southern District of New York with District Judge John Clark Knox presiding. During the course of the trial the proceeding against the co-Defendant Cora L. Harris were discontinued, with the trial against the primary defendant, Jerry Vogel Music Company proceeding. On 24 February 1943 Judge Knox rendered his verdict in the trial against Defendant, Vogel.

Judge Knox concurred with the previous findings and holdings of both Judges Leibell and Lovett. Consistent with the earlier decisions Judge Knox dismissed the complaint made by the plaintiff citing the plaintiff’s lack of standing, see: Marks Music Corp. v. Vogel Music Co., 49 F.Supp. 135, 57 U.S.P.Q. 37 (S.D.N.Y. 1943)

Following the dismissal, the plaintiff appealed the decisions of Judges Leibell, Lovett, and Knox to the Court of Appeals for the Second Circuit. On appeal, the appeal was argued before a three judge panel consisting of Circuit Judge Learned Hand, Circuit Judge Harrie Brigham Chase, and Circuit Judge Jerome New Frank. On 26 January 1944 the panel delivered its opinions on the appeals.

Judges Hand, Chase, and Frank first reviewed the resolution of the dispute pertaining to the song “December and May” Judge Hand writing for the panel reaffirmed principles of copyright renewal as set forth in the District Court.

We decided in Maurel v. Smith, 2 Cir., 271 F. 211; that if one of several authors took out the copyright in his own name upon a joint work, the copyright was valid, but the copyright owner held it upon a constructive trust for the other authors. This was extended to the renewal of a copyright in Silverman v Sunrise Pictures Corp., 2 Cir., 273 F. 909, 19 A.L.R. 289; Carter v Bailey, 64 Me. 458, 18 Am.Rep. 273, turned upon the fact that there was no equity in the plaintiff’s bill, but assumed that the co-tenant might be liable at law, as he always has been in equity (Minion v Warner, 238 N.Y. 413, 144 N.E. 665, 41 A.L.R. 1412); it accords with what we have held. Hence, if the song was the joint work of Marks and Loraine, when Marks took out the renewed copyright,
it was valid, but he held it upon a constructive trust for Loraine, as does the plaintiff, his assignee. There only remains to be decided whether the song was a joint work, or a `composite,’ as that phase is used in Secs. 23 and 24 of the Copyright Act, 17 U.S.C.A. §§ 23, 24. Marks Music Corp. v. Vogel Music Co., 140 F.2d 266, 60 U.S.P.Q. 257 (2d Cir 1944)

Having reaffirmed the nature of valid copyright upon a joint work, Judge Hand then confronted the central question of whether the song “December and May” was a joint work or a composite. The three judge tribunal adjudged that the composition was a joint work, and the renewed copyright was for the whole composition as Judge Hand wrote:

As we have said, the original copyright was of the song as a `musical composition,’ and the renewal was in the same terms, the work being described as a `song and cho.’ (song and chorus). So far as it appears, Marks therefore never meant to renew the copyright for the words alone, though we will assume that that made no difference, if he was entitled to do so. He was not; the song was not a `composite’ work, it had to be renewed as a whole, or not at all for it was the indivisible product of `joint authors’ So far as we know, the first definition of `joint authorship ‘ is in Levy v. Rutley L.R.6 C.P. 523: `a joint laboring in furtherance of a common design’ (per Keating, J., p. 529); an agreement `to write a piece, there being an original joint design,’ (per Montague Smith, J., p. 530). This definition I accepted in Maurel v. Smith, D.C. 220 F. 195, when that case was before in the district court, and we accept it now. If so it makes no difference whether the authors work in concert, or even whether they know each other; it is enough that they mean their contributions to be complementary in the sense that they are to be embodied in a single work to be performed as such. That was the case here: Marks wrote the words as words for a song; Loraine composed the music as music for a song. It is true that each knew that his part could be used separately; the word as a` lyric’; the melody, as music. But that was not their purpose; the words and the music were to be enjoyed and performed together; unlike the parts of a `composite work’ each of which is intended to be used separately, and whose only unity is that they are bound together. Marks Music Corp. v. Vogel Music Co., 140 F.2d 266, 60 U.S.P.Q. 257 (2d Cir 1944)

The holdings that the renewed copyright on “December and May” constituted a valid copyright in which the renewing coauthor functioned as a constructive trustee on the behalf of the non renewing coauthor, and that in both the original and renewed copyrights o the composition demonstrated the work was represented as a joint work and not a composite work predicated the affirmation of the judgment of the District Court.

After upholding the pronouncements made by the District Court on the dispute involving “December and May” directed their attention toward the case revolving around “The Bird On Nellie’s Hat,” in this case the defendant in the District Court appealed Judge Lovett’s issuance of the permanent injunction in favor of the plaintiff, and the subsequent award of damages to the plaintiff by the District Court.

Judge Hand’s examination of the questions arising from the conclusion and decisions reached by Judge Lovett began with a brief restatement of the history of the composition entitled “The Bird On Nellie’s Hat.” Summarized briefly the history of the work is as follows:

1. Arthur J. Lamb, an English national wrote words that became the lyrics for the composition that ultimately became “The Bird On Nellie’s Hat,” while, Alfred Solman independently of and, unknown to Arthur Lamb composed the music for the for the composition that ultimately became “The Bird On Nellie’s Hat.”
2. Lamb and Solman submitted their respective works to the Joseph W. Stern and Co. publishing house to whom both had assigned their rights.
3. The Joseph W. Stern company combined Lamb’s lyrics and Solman’s into a
single composition entitled “The Bird On Nellie’s Hat,” which the Stern Company
copyrighted as a whole on 17 September 1906.
4. Arthur J. Lamb died on 10 August 1928 before the expiry of the original copyright. Arthur Lamb’s family status was uncertain, it was known that he had been married, but attempts to locate his widow failed, and all available evidence seemed to indicate that the marriage was childless. After his death his widow never renewed the copyright.
Also, it could never be determined whether he appointed an executor prior to his
death in order protect the estate.
5. On 27 September 1933 Alfred Solman renewed the copyright in the name of himself and the deceased Lamb.
6. On 20 June 1936 Solman executed an instrument assigning his rights under the renewed copyright to the plaintiff.
7. On 4 June 1940, an English national stating he was Cecil Lamb, the brother of the deceased author of the lyrics and heir to Arthur Lamb’s rights under the renewed copyright, assigned all rights to the composition to the defendant.

After surveying the chronology of the composition Judge Hand shifted his focus to the argument advanced by the appellant that Cecil Lamb, by virtue of his relationship to the deceased lyricist Arthur Lamb was the successor to his brother Arthur as the legal co-owner of the renewed copyright. As a consequence, the appellant argued that Solman’s assignment of rights to the appellee covered only his portion of the title and rights under the copyright. Therefore, the defendant maintained that since, the plaintiff did not possess sole title to the copyright; he did not have the requisite standing to bring the lawsuit.
In the text of his opinion Judge Hand reduced the argument into four propositions: One was the work a composite work or joint work and what effect would that have on the validity of the renewal. Two, who does the statutes and case law give standing to bring a cause of action. Three, did Judge Lovett’s findings concerning the identity and status of Cecil Lamb result in an inequitable decision. Four, to what extent may a party recover damages in case.
The appellate panel in its deliberations and discussions on the style of the work resolved that the composition was a joint work and not a composite work. Since, the song was the joint work of Lamb and Solman, the renewal of the copyright mandated a renewal of the work as a whole. These findings raised the following secondary questions: First, was the renewal as a whole valid or invalid? Second, was the legal title vested in Solman alone, or was the title vested co-jointly in Solman and Lamb respectively. Judge Hand writing for the chamber found that “The Bird On Nellie’s Hat” embodied a joint work. Since, the song was a joint work possessed of a valid original copyright, the renewal of any copyright dictated that the application for an extension of the mandate cover the song as a whole, raising the question of whether the renewal was valid:

Although, as we have said, Solman described Lamb as having `written’ the song, and himself as having only `composed’ it, he nevertheless claimed to be the `renewal owner,’ and took out the renewed copyright in his own name. Since, it was not a `composite’ work , the copyright in which could be renewed in parts, we must choose between holding the renewal bad or good as a whole; and between holding that the legal title to it was in Solman alone, or in Lamb and Solman jointly. There cannot be any doubt as to the answer to the first question: the renewal was valid for the song as a whole. Although, as we are holding as to the two songs: `December and May’, and `I Wonder Who’s Kissing Her Now’, when one of the two authors takes out the renewal in his own name, the legal title is in him, some doubt may be raised whether the legal title does not run to both authors jointly, when as in this case, it appears, on the very face of the application that there are two, 140 F.2d 266; 140 F.2d 270. It is not necessary to decide the point, as will appear; but for argument we will assume that, when, as here, one of the joint authors asks for and gets the renewal in his own name, the legal right goes to him alone and the other author’s interest is equitable. Marks Music Corp. v. Vogel Music Co., 140 F.2d 268, 60 U.S.P.Q. 256 (2d Cir 1944).
On the question of who possessed the standing to bring a suit the court held that the holder of the legal title could bring a lawsuit independently of and without requiring others parties who possessed equitable interests to join in the litigation as a party to the suit. The court also held that as Solman’s assignee the plaintiff possessed the necessary standing to bring a suit, and request an injunction as well as damages.
It was early decided that the hold of the legal title to a copyright might sue without joining others who had an equitable interest in the copyright (Little v Gould, Fed. Cas. No. 8,395, 2 Blatchf. 362; Hanson v. Jaccard Jewelry Co., C.C., 32 F. 202), and the same rule applies to patents. Yale Lock Manufacturing Company v. Sargent, 117 U.S. 536, 552, 553, 6 S.Ct. 934, 29 L.Ed. 954; Rude v. Westcott, 130 U.S. 152; 9 S.Ct. 463, 32 L.Ed. 888; Hazeltine Corp. v. Electric Service Engineering Co., D.C., F.2d 662, 668 (Thacher, J.). However, Federal Rules of Civil Procedure rule 17(a), 28 U.S.C.A. following section 723c, now requires and Equity Rule 37, 28 U.S.C.A. § 723 Appendix, before it required, all actions to be brought in the name of the real party in interest. It may be that this action would therefore have had to be brought in the name of the beneficiaries of the constructive trust of which the plaintiff is trustee, just as it would have, had the legal title been joint. The clause beginning `but,’ and enumerating persons who have no beneficial interest, includes only the trustees of express trusts. We shall assume arguendo, that Rule 17(a) would require the action to be brought in Lamb’s name.
Nevertheless, the plaintiff, as Solman’s assignee, was a `real party in interest’’ not, it is true, the only such party, but as much so as Lamb, or Lamb’s successors in interest. It therefore was entitled to sue in its own behalf. It was entitled to an injunction; it was entitled to its own damages; it was entitled to some share in any statutory damages; it was entitled to some
share in the defendant’s profits. Marks Music Corp. v. Vogel Music Co., 140 F.2d 268, 60 U.S.P.Q. 256 (2d Cir 1944).

Judge Hand’s decision on this point also entailed a discussion on the related topic of the status of Lamb’s successors, and Judge Lovett’s decision in that regarding Lamb's successors. Judge Hand argued that their exclusion was immaterial to the case.
Therefore, the objection resolves itself into whether the nonjoinder of Lamb’s
successors is fatal to the plaintiff’s prosecution of the action; and makes no difference as to that whether their interest is legal or equitable. These parties are not indispensable within Rule 19(b); because their rights can be reserved in the judgment; the action can be finally decided as to the plaintiff without them, if they cannot be served. On this record we cannot say whether they can be served or not, because we do not know who they are. But even assuming that it rests upon the plaintiff to show that they cannot be served, the objection is nevertheless not good because, the defendant was obliged to take it by motion or by answer ((Rule 12(h)) which it did not do. Marks Music Corp. v. Vogel Music Co., 140 F.2d 268, 60 U.S.P.Q. 256 (2d Cir 1944).
On the matter of damages, the Circuit Court of Appeals for the Second Circuit modified the judgment of the District to limit the Plaintiff’s right to recover only its actual damages, its proper share of statutory damages, and their proper share of any profits.

Nevertheless, the plaintiff, as Solman’s assignee, was a `real party in interest’’ not, it is true, the only such party, but as much so as Lamb, or Lamb’s successors in interest. It therefore was entitled to sue in its own behalf. It was entitled to an injunction; it was entitled to its own damages; it was entitled to some share in any statutory damages; it was entitled to some
share in the defendant’s profits. ... As we have already suggested, that does not mean that the plaintiff may recover all the statutory damages, or all the defendant's profits. The judgment must be modified to provide that the recovery shall be confined to the plaintiff's own part; that is to say, its own actual damages, to its proper share of statutory damages, and to its proper share of the profits. What the proper share is we do not now decide. Marks Music Corp. v.
Vogel Music Co., 140 F.2d 268, 60 U.S.P.Q. 256 (2d Cir 1944).

The Second Circuit while, modifying the provisions of the District Court’s opinion impacting the apportionment of damages, affirmed the remainder of the decision.

Turning to the third appeal, centered on the song “I Wonder Who’s Kissing Her Now,” The appellate court affirmed the decision of the District Court without adding any additional substantive points to this portion of the appeal. As Judge Hand said:
This is an even stronger situation for the defendant than in the case of `December and May’, and we need add nothing to what we said in disposing of that appeal. Marks Music Corp. v. Vogel Music Co., 140 F.2d 270, 60 U.S.P.Q. 259 (2d Cir 1944).
After the decisions had been handed down by the Circuit Court of Appeals for the Second Circuit, Jerry Vogel Music Company filed a motion in the Federal District Court for the Southern District of New York, demanding a declaratory judgment against Edward B. Marks Music Corporation. By the terms of their motion the plaintiff, Vogel would be recognized as the half-owner of “The Bird On Nellie’s Hat” for the term of the renewed copyright. The defendant, Edward B. Marks Music Corporation countered that the plaintiff’s complaint as supplemented by a bill of particulars should be dismissed because, the plaintiff failed to state a claim upon which to base the relief requested of the court. On 21 August 1944 District Judge Edward A. Conger denied the plaintiff’s motion as stated in Vogel Music Co. v. Edward B. Marks Music Corp. 56 F.Supp. 79, 63 U.S.P.Q. 1 (S.D.N.Y. 1944).
After this point in the history of the controversies Westlaw is silent regarding any subsequent actions related to these disputes.
Endnotes


[1] Though Judge Lovett is listed as the judge who delivered the opinion in Marks Music Corp. v. Vogel Music Co. 47 F.Supp. 490 (S.D.N.Y. 1942) in the text of the opinion, this may be a mistake. Examining the lists of former judges of the Federal District Court for the Southern District of New York, contained on the Federal Judicial Center website and the History of the Court for the Southern District of New York no Judge with the surname Lovett appears on the lists of district judges.

[2] The citation given in Judge Lovett’s opinion gives the incorrect court in the citation. The volume and page numbers mentioned in the citation refernce the appellate decision