*2 Spade of Sam and other stories by Dashiell Marcus, Zissu (Leon- & New City York Hammett.” Zissu, Marcus, Stein, ard Abraham Alan J. May 15, 1946, On assigned City, counsel), plaintiff. New York right exclusive to the use Perkins, City (Morris R. W. York New radio, television, pictures motion Ebenstein, Joseph Karp, D. Theodore R. other media of the name Spade” “Sam Harry Olsson, Kupferman; Jr., R. Brook- title, “The Adventures of Sam Y., lyn, counsel), N. for defendant. in connection original material to be CHASE, CLARK, Before DOBIE, written others. Subsequently, since ' n . Judges. Circuit July, 1946, about these assignees and their produced successors have weekly radio CHASE, Judge. Circuit called show Spade,” “Adventures of Sam principal character of Appellant, which has been Hammett, Dashiell is the au- named modeled after Hammett’s detec- story thor' of a detective called “The Mal- tive. tese This story published Falcon.” was first serially magazine during- January On Warner wrote a 1930,the being through installments copyrighted letter attorney to the Columbia published by Corpora- Broadcasting System- Pro-Distributors in which it com- tion. registered plained copyrights plagiarism and Knopf’s conveyed by Knopf, copyrights were it to Alfred A. drama, broadcast Inc., published Kandy Tooth,” “The said, installments and and also “Furth- book, ermore, registering revisions of them a it has come to our attention that in copyright you thereof. Ham- violation of our using are contract, brought an ac from the derived terms their Spade, who character Sam Inc., Bros., Al of broad- tion entitled Falcon, in a series The Maltese *3 actually fred Broadcast Knopf, are A. Columbia network, Inc. v. your and casts over ing System, Inc,, Spier, of the Wild Spade titles William name using the Sam Co., Inc., Regis May it root and Radio On broadcasts.” these successor, the District for Court the Southern District assignees’ wrote to Hammett’s California,1 against broadcasting the saying, “The of Corporation, Regis Radio network, sponsor, producer, and an the the Spade are of Sam character and name Hammett’s prop- the successor in interest literary part valuable integral of this * * assignees’ right? Spade.” to “Sam The *. erty Maltese Falcon] [The complaint charged dramas in Ad- that the radio your program, “The appears to us series, of infringement the “The Adventures Sam Spade,” is an ventures Sam program produced' apart literary and an individual in this rights of our client the * * * hereby infringement from that constituted series Demand is property. of, with, copyright competition and unfair use you discontinue upon you that made stories, book, original Spade and the mo of Sam character of the name and picture “The called Falcon.” again it May And on forthwith.” copyright infringment complaint As replied to the attorney an who had wrote to charged: September “17. Since about 13, saying, May letter defendants and each them have been in Spade is the character Sam “So far as fringing copyrights each and all of men concerned, important valu- most and it is a tioned in dramatizing part which is Maltese Falcon able magazine by writing stories book and and Bros, in property of Warner the exclusive scripts series of dramatic radio entitled radio, field of television and motion Spade’ print ‘The Adventures of Sam and pictures. Spade is to use Sam use To ing, publishing scripts, vending and said part valuable of the Maltese Falcon. We scripts copied defendants have Spade Sam are of aware that some course degree plaintiffs’ substantial copy from published were the Maltese stories after righted works. scripts Said dramatic radio copyright Falcon proprie* and doubtless the produced performed have been and publicly original their tor work authorized profit for and transmitted defendants law, publication. Doubtless matter of as a past and each of within years them two could, publisher of Maltese Falcon he over the radio several stations affiliated wished, Spade authorize additional Sam with the defendant Columbia Broadcasting Bros, form; stories book but Warner has System, Inc. exact sepa The number of rights of rights the exclusive the radio infringements rate part of these is the only use Maltese Falcon and one defendants is not known plaintiff at this Spade can use of who authorize Sam on the time.” air. “Moreover, upon As competition, examination to unfair charged: * * * broadcast, shows “20. radio which have been Spade’ character ‘Sam something you principal will plaintiffs’ observe much more character in copy- culpable single than use of charac- righted Falcon’; work ‘Maltese and the * * Spade Sam On ter Spade’ name and character of ‘Sam have assignees formally Hammett’s notified long been well known and identified in the against Warner, public’s him of claims them plaintiffs’ mind with the work; asserting rights against their him under in radio the name and character of warranty assign- them his contract of Spade’ have come ‘Sam to be identified permitted the assigned ment that the use of by plain- licensed with several broadcasts subject liability would not them to plaintiffs’ have Defendants without tiffs. infringement. permission appropriated name 28, 1948, Warner, May Spade’ ‘Sam joining origi- Al- characterization Inc., Falcon,’ Knopf, plaintiff pursuant nally A. created in ‘Maltese fred pending publication. Case at date ing, any as a copied claiming title alleging the same used or of defend- part right content in or the use said substantial to control their Spade’ featur- program. ants’ In the course title radio ‘Sam ing from time excepting the programs Spade’ radio defendants have the name ‘Sam by- right Falcon’ to time ‘Maltese to use said character in and as referred to the inci- of the name to various ‘The Maltese Falcon’ and have referred work entitled pursuant dents, situations, agreement between the characters [and] attempt 23, 1930; to trade ‘Maltese Falcon’ in dated June upon good plaintiffs’ works will of *4 “3. For as such other and further relief obtain benefits therefrom. unearned to the just.” seem 18, 1948, amended its Warner June answered, right of denying Warner the complaint join before answer to Hammett appellant requested, both the on modify as a defendant and to above right ground the sole had allega- quoted by adding sections to 17 the use of the character “Sam that, copied from “defendants have pictures motion and radio under the terms plaintiffs’ works, among things, other contract with and on the its Hammett characters, scenes, plot, dialogue, language, ground controversy between the that the thereof,” by chang- and other materials and parlies over broadcasts did not concern quoted part ing the “The read: 20 right of the character solely to the use principal Spade’ character ‘Sam is the but story, also involved use of plaintiffs’ copyrighted character work characters, plot and other material names, Falcon’.; ‘Maltese and the charac- printed from “The Falcon” in ters, scenes, dialogue, plot language, and picture and motion also versions. set other materials used in ‘Maltese Falcon’ forth other defenses based on claimed have, pic- in the and motion field radio priority alleged of the California action and tures, been well known identified in the and present joinder defects in the as action public’s plaintiffs’ mind with the work. De- parties. judgment summary Motions for plaintiffs’ permission fendants have without parties on affidavits were filed both appropriated names, characters, scenes, lan- appellee’s granted court below mo- guage, plot dialogue, and other materials tion, complaint. dismissing judg- The Falcon,’ originally ‘Maltese created ment of upon the court was based the exer- copied and have and used the same as a cise of its discretion to dismiss because part pro- substantial of defendants’ radio decree would not “determine the con- entire ” * ** gram. troversy because, parties” between the This filing, by amendment followed the complete “There can be a determination of 9, 1948, present Hammett of the parties the issues only to all the declaratory judgment. for a action his action, California only in that ac- appellant alleges action tion that all the issues are raised and all the substantially facts set forth above and parties appeared.” asks for a decree. appeal Hammett’s judgment from this “1. Determining and adjudicating the based, first, ground on the that unless the rights parties premises herein in the issue raised in this action necessarily determining aforesaid and and adjudicating disposed of in action, the California defendant, that the Warner Brothers Pic- court erred as a matter of in dismissing law tures, Inc., rights has no to the character complaint and, second, on the further Spade’ excepting right ‘Sam to use said ground that, since this begun action was character in and as of the work enti- before Hammett was made party pursuant tled ‘The Maltese Falcon’ action, California he is entitled right as of agreement between the dated June -to a determination the issues herein. 23, 1930; and further “2. enjoining For decree appellee’s and restrain- motion to dismiss ing defendant, officers, agents, em- was addressed to the sound discretion of the ployees, from further asserting, Co., contend- court. district Brillhart v. Excess Ins.
14!) 1620; would 1173, L.Ed. violate 491, 86 62 S.Ct. 316 U.S. 4 or that such use Quarles, name and Surety v.Co. Casualty & Aetna Indemnity no assignees violate Hammett or would his Cir., 321; Associated F.2d 92 462; Engineer Colliery See Cir., F.2d Co., 125 Warner. Corp. 2 v. Garrow Cir., Co., Hammond, Correspondence v. 1 Co. United Schools v. Electric Co. Western C.C.S.D.N.Y., 152, F. Nichols v. Univer made 94 the order 135 Whether F.2d 283. 119, sal Pictures 2 discretion 45 judicial scope within the Co., 414, Fisher v. N.Y. 132 N.E. law should Star 231 trial court committed to the gov 19 A.L.R. Underhill The standard control decision here. Schenck, N.E. A. has been 238 N.Y. discretion erning exercise variety no L.R. “will serve an indication action whether the stated as Chem of the issues raised and complexity & Carbon purpose,” useful Carbide the unlikelihood that decree could take Corp. States Industrial icals United simple requested Chemicals, Inc., Cir., absolute form prac appellant. of some “could whether *5 parties,” Larson v. tical convenience controversy puts The ques- which these 450, Cir., Corp., 2 134 F.2d General Motors tions at issue of arises out the broadcasts said that court
453. And has been it produced assignees by Hammett’s and there controversy try “to should refuse allegations are no claims other made try particular with piecemeal, issues or to by Warner than those made in connection controversy, in settling toor out the entire pre- with of any those or other broadcasts already an which with terfere raising questions. sent facts the same But Surety Casualty & been instituted.” Aetna the facts as to those broadcasts creat- supra, page F.2d at Quarles, 92 325. v.Co. parties ed issues between the much broader Note, Developments in Law—Dec See than those raised in this action. Warner Harv. Judgments 1941-1949, 62 laratory contends that the use the materials — 787, seq. dis et Whether the L.Rev. 805 from “The beyond Maltese Falcon” went properly its discretion trict exercised mere Spade” use of the character “Sam depend upon analysis of must therefore plagiarism constituted a substantial of other present action to the the relations of the complains elements that work. controversy parties, proba between its practices unfair constituting com- eliminating utility ble them in uncertain to petition. apparently And it asserts .that ties, pending its relation to the action Hammett’s in infringement role in the court. California greater than is indicated terms assignment 15, May 1946. by Hammett’s questions raised legal The disposition of apparent that scope protec- Thus it complaint concern the settle present would in form assigned to copyright this action by the tion accorded controversy between right only part of the of Hammett’s appellee, extent might leave alone parties it. This fact copyrighted work of the as author doubtful, but utility very compe- of its question law of unfair under the characters considerations. other related there are tition, the contract effect of kind are not of a raised issues which are remaining Ham- in any rights on apart determination may subject convenient Thus the that time. mett at controversy if even rest of use of that the assert be understood possible under the were such determination “Sam alone name character and Act, Judgments U.S.C.A. Declaratory 28 infringement §§ of the not would amount 2201, Ins. Aetna Life Co. v. 2202. See Falcon” “The Maltese or be copyright of 242, 227, 461, Haworth, 57 S.Ct. U.S. if 300 use competition that even such or unfair 617, 1000; A.L.R. Tennessee either, L.Ed. 108 by 81 would not might be others Coal, Muscoda Local No. & v. Iron R. Co. assignees. It further or his 176, Instead, Cir., they 180. 123, F.2d ap- use 5 137 that the to assert be understood law in which each case name, except in field or arise in pellee particular facts taken as a Falcon,” “The Maltese turns connection 150 Edmondson, Cir., Carpenter See view. 5 See v. inseparable whole. more less or Krejci, supra, F.2d 92 Co. v. Mutual Life Ins. Pictures Nichols v. Universal Cir., deference we charac 7 123 F.2d With 594. a name
45 F.2d The use 122. this in practical they do not think should control is not literary production ter in a of stance. elements ly separable from the other whether determining production priorities general determining A rule for property have literary rights in another pending basis of between actions on the defining the A impinged upon. filing in some of dates of has been stated char name and cases, recognized but is has been useful Spade,” order to be acter “Sam applied this rule is not to in mechanical be define have to parties, would way regardless other considerations. context terms of each Co., supra, Brillhart v. Excess Ins. 316 U.S. could the character manner 1620; Chicago- 62 86 L.Ed. S.Ct. exploited in relation be used and Bowles, Forwarding Furniture 7 Co. probable that existing Indeed it works. 411; 161 F.2d Western Electric Co. v. concern by the facts raised the issues Hammond, Cir., 1 135 F.2d See Cros con rise to this ing giving the broadcasts Corp. ley Westinghouse Mfg. Elec. & considered, would troversy be were to Co., Cir., 475; Cresta Blan defining possible frame a decree Corp., Cir., ca Co. Wine v. Eastern Wine the character rights of Hammett in precision t'o real with sufficient alone *6 present In controversy, question the the help parties determining their in priority subject simple is not mechani- with future use rights in connection application cal determination of this respect is in the situation either. rule. The proceeding arising first out of in usual contrast to the situation the more the facts on which this suit is based is patent and insurance cases where the action, Warner’s California to which Ham- infringement validity of sues of a party. mett was not a raised first patent liability or license and cover the issue of his in the character and age usually clearly separable. are These name “Sam in this action. But heavily weigh against granting factors the the issue participation of Hammett’s in the declaratory judgment of a based a con general infringement of “The Fal- only controversy sideration a the con” was first in raised Warner’s amended despite undoubtedly great desirability to the complaint in the California action. Solu- an early Hammett of clarification of his problems tion of these requires analysis controversy the over broad consequences anticipated to be . They especially significant casts. are when the decision juris- to take or take dispute- his is with rather than with diction. assignees. his other We will assume for purpose the of dis- against militating taking The reasons cussing priorities as between these suits proceeding jurisdiction of this rein are procedurally that is it possible, as a result pending forced when the effect of the Cali joinder, amendment and that each of- foria is Even action considered. in situa may these comprehend actions all the issues declaratory judgments in which tions are parties and all the now involved in either. useful, pendency prior action rais possibility Without this there would be a ing the same found issues to be a clear balance of convenience in favor of ground justify, although sufficient not to in action which all or most of the is- require, Casualty dismissal. Aetna & Sure sues parties joined, could be they as are- ty Quarles, supra; v.Co. American Auto joined now in the California sui-t. Freundt, Cir., mobile Ins. Co. v. 7 103 F.2d 613; inadequacy Larson v. General Motors Because the New- of. page 453; form, supra, present 134F.2d at Aetna York action in its Casual indicat- Yeatts, Cir., ty Surety above, & v. complete Co. 4 settlement,. 99 F.2d ed effect Only express parties, cases contrary few both even between actions would.
151 possi that the Appellant argues further judgment. through to carried be Lave to to dis discretion bility of an exercise of between issues hand, if all the other ac of another pendency on the miss based to be are York action New parties only the issue where tion exists rendered properly settled necessar declaratory must judgment action relin- avoided, Warner multiplicity ily pending action. Some decided in the of, advantage of deprived quish, beor language to that certainly contain cases against Ham- of its priority effect, although used in situations is often it infringement issue. general mett on the deter where issue fact one whose is issue of trying the And in order to avoid impossible. mination in is action par- against different infringement twice Maryland Fi Co. v. Consumers Casualty priority relinquish the ties it must Service, Inc., Cir., nance 3 as- complaint against Hammett’s original Faulkner, 6 515; Maryland Casualty Co. v. priorities is question of signees. When the Life 179; F.2d Guardian 126 consequen- light considered in the these Kortz, Cir., F.2d Ins. Co. present inadequacy action ces of However, we are to follow other inclined complete effect a settlement enough decisions to the effect that issues or a useful settlement issue can de the issue raised appears between the to reason action, treating pending cided thus considering California degree of likelihood of such determina proper desirable one. Moreover it is not tion as one factor be considered anticipation by appellant of a exercise of discretion. See Brillhart joinder raising and of the of issues Co., supra, page Excess Ins. 316 U.S. at were inevitable the California action once 1620; 62 S.Ct. 86 L.Ed. Western begun permitted had should be of itself to Hammond, supra, Electric Co. v. price force forum a shift in the as'the page present at 287. And case we avoiding involving multiplicity actions think it objection sufficient answer to this closely the same or issues. related that the issue is pleadings raised *7 however, argued, the fact that that It is that, the California action although a party a to the Cali- not made was possibility decided, may exists that it not be commencing this ac- action fornia before very especially decision is likely prop contrary result as a matter requires tion a erly determining the factors be to consid priority because of the rule of law ered in computing damages under contention, filing The answer to this dates. rule of Sheldon v. Metro-Goldwyn Pictures principle equita- with the accordance Corp., Cir., 106 F.2d ques should the above, application rule indicated ble that reached, be and it be made cer Appeals of the First Circuit Court appellant tain here for counterclaims seems us be conclusive this claim. a declaration. in a similar has held That court situation appear Moreover does that that, party even before it when a could originated complained of in Cal broadcasts party prior pend- a not have become a appears par all ifornia and it also that ing action, might he par- the fact that appearances in the have entered Cali ticipated ties defense defendants hand, the other the con fornia action. On having a common interest enough. was Hammett and makes tract between Hammond, supra, Electric Western Co. rights subject to New York so their law in page at 287. do go We not have to applicable. law is Yet in our far as state so far since Hammett in fact now party a not of sig circumstance is much appeared this view California action. First, to dismiss. the motion holding in nificance on Nor is this conflict with As- are to be tried in issues one Corp. Indemnity Co., sociated v. Garrow whether important place less than supra, or the other since was a that case where in the single proceeding they are tried missing party absence of -the the issue could may emerge; decree useful not have raised at all. docket; second, push for the new excuses to provisions of a case off under the Ju- though even Code, preponder- sympathize dicial if there is a clear I with the difficult forum, facing Cali- situation judges, can- ance in overworked I of another favor permissible trans- discretion not course one fornia in its believe may yet court request litigants. fair to 1404(a), at the Under it seems fer the consolidated § 1404(a). For remedy me the now party. 28 U.S.C.A. limited § we hold that it transfer. above reason's an otherwise er- abuse of discretion or ror of to determine law California ac- circumstances and, consequently, preferred
tion was to be complaint.
to dismiss this
Appellee alleges in the com- other defects
plaint, Knopf, including join failure to appel- copyright, the owner OF INTERNAL COMMISSIONER REVE hands,” we v. KORELL. lant’s “unclean both of which NUE most, since, unnecessary find at to consider No. Docket 21225. they already weight merely add to the Appeals United States Court tending support sufficient factors the ex- Second Circuit. ercise of discretion below. all the With Argued May 11, 1949. facts, parties, and all the issues be- court, single possible fore a might Decided June way enter would in a useful decree which Rehearing July 14, Denied determine the here raised Ham- issu.es however, not, express mett. We do now opinion as to the extent to which the sought questions involves within power of the court to decide under the Declaratory Judgments Act. See Larson v. Corp., supra,
General Motors at
page 453.
Judgment affirmed.
CLARK, Judge (dissenting). Circuit wholly my
While I not share brothers’ do comparative advantages
conviction California action
shown over being
one civil modern below— expansion capable of to fit the needs of the
occasion —I have serious concern as no
giving preference to that action. Had granted by
that been means a transfer under the new the action 28 U.S.C.A. §
1404(a) stay, say or even I should no matter, suggest, But serious
more. I position court to take the refusing litigant jurisdiction unadju- quite
dicated cause within court’s statu- tory authority. litigate Jurisdiction granted something or withheld a court at wish or convenience. I growing tendency
discern a in the congest-
ed District Southern New York look