Carl Laemmle Music Co. v. Stern

209 F. 129 | S.D.N.Y. | 1913

HAND, District Judge

(after stating the facts as above). [1, 2] I can see no possible jurisdiction over such a suit as this. It does not depend on diverse citizenship, and may perhaps be thought to rest upon the seventh subdivision of section 24 of the Judiciary Act (Act March 3, 1911, c. 231, 36 Stat. 1091 [U. S. Comp. St. Supp. 1911, p. 135]) as a suit arising under the Copyright Law. That statute, section 25 (Act March 4, 1909, c. 320, 35 Stat. 1081 [U. S. Comp. St. Supp. 1911, p. 1480]), only authorizes suits for infringement, of which-this is not one. Nor does this suit arise under-the laws of the United States (subdivision 1 of section 24).

[3] It is true that the state suit will incidentally affect the copyright, because the copyright law gives the protection of the statute only to the author or proprietor of the literary property in question, and the question of ownership will be determined in the state suit. That determination will be fatal to any subsequent suit on the copyright itself, but there is no rule anywhere in the books which suggests that a federal court may enjoin a state court from determining a question of fact which may afterwards turn out to be vital to some right secured by a law of the United States. Supposing, for instance, A. registers some mark, itself a wrongful infringement of another’s common-law trade-mark. Is it not absurd to suppose that a state court has no jurisdiction to entertain a suit to enjoin the infringement of the common-law mark, because the adjudication will eventually defeat the registered trade-mark? Or, suppose that A., stealing a trade secret, gets a patent upon it. Can it be said that a state court may not enjoin A. because the result'will be to establish by estoppel some fact which will defeat A.’s patent if he sues upon it? There are many questions constantly decided in the state courts which may destroy or validate rights granted under the laws of the United States. The idea that, as soon as it appears that some such question of fact is shown to exist, the state court may be enjoined from acting, has no support in precedent or principle.

[4] Furthermore, even though the state court were wrong, the only remedy would be an appeal to the Supreme Court of the United States, for section 720 of the Revised Statutes (U. S. Comp. St. 1901, p. 581) is designed to meet just such a case. The plaintiff, having a right secured him by the laws of the United States, has recourse to the federal courts, when he sues on that right; but, if the state courts commit some error in cases where his right is'incidentally involved, he must wait for an appeal. Congress does not mean that inferior federal courts are to enjoin proceedings elsewhere for supposed errors of those judges. It is substantially only in cases of bankruptcy or where it is necessary to protect their own pre-existing possessory jurisdiction that an inferior federal court may enjoin such suits.

The complaint will be dismissed, with costs.