18 Cal. 2d 419 | Cal. | 1941
The petitioners seek to prohibit the respondent superior court from entertaining jurisdiction'of an action brought against the petitioners and others as defendants to recover damages for alleged misappropriation of a literary and dramatic work claimed to be the exclusive property of one Al Rosen. In the complaint in the pending action, the plaintiff, Al Rosen, alleged that he is the owner by assignment of a common law copyright in an unpublished dramatic composition and motion picture scenario entitled “The Mad Dog of Europe”; that in 1933 the work was submitted by him to the defendants, petitioners herein, and that it was rejected by them; that in 1939, without his knowledge or consent, the defendants appropriated the dramatic composition and in 1940 presented the same in a motion picture entitled “The Mortal Storm.” He also alleged the immediate giving of notice to the defendants of the alleged misappropriation. He sought damages in the sum of $575,000.
Loew’s Incorporated and Louis B. Mayer, two of the defendants in said action, and who are the petitioners herein, answered the complaint denying any misappropriation and alleging that the scenario, “The Mortal Storm,” was based upon a novel of the same title written by Phyllis Bottome, also named as a defendant in the action. The answering defendants also alleged and presented a certificate showing that in December, 1933, one copy of the composition “The Mad Dog of Europe,” not reproduced for sale, was entered in the office of the Register of Copyrights in the Library of Congress at Washington, D. C., under the copyright act of March 4, 1909, as amended by the act of March 2, 1913,
The petitioners now likewise contend that exclusive jurisdiction of all matters arising under the copyright law is vested in the federal courts, and that the subject matter of the pending action is one in which the federal courts have such exclusive jurisdiction. The respondents assert that the plaintiff in the action is relying on a common law copyright which has been expressly reserved by the copyright act.
There is no doubt that apart from statute the law recognizes certain rights of property in the original intellectual products of an author, which are entitled to the same protection as rights in any other species of property; that the author has the right of first publication and that such right is transferable. (Wheaton v. Peters, 33 U. S. (8 Pet.) 591 [8 L. Ed. 1055]; Parton v. Prang, 3 Cliff. 537 [Fed. Cas. No. 10, 784]; Holmes v. Hurst, 174 U. S. 82, 84 [19 Sup. Ct. 606, 43 L. Ed. 904]; Bobbs-Merrill Co. v. Straus, 210 U. S. 339, 346 [28 Sup. Ct. 722, 52 L. Ed. 1086]; Palmer v. De Witt, 47 N. Y. 532 [7 Am. Rep. 480].) But under that law publication by the author is a dedication to the public and the author no longer has an exclusive right of property in the work. (Wheaton v. Peters, supra; Palmer v. De Witt, supra; Holmes v. Hurst, supra; Caliga v. Inter-Ocean Newspaper Co., 215 U. S. 182 [30 Sup. Ct. 38, 54 L. Ed. 150]; Fashion Originators Guild v. Federal Trade Commission, 114 Fed. (2d) 80, and cases cited at pp. 83-84.)
By section 8 of article I of the United States Constitution, Congress was given the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right in their respective writings and discoveries.'’
The copyright law grants to any person, upon compliance with its provisions, the exclusive right to publish and vend
Section 25 provides the remedies for infringement of copyright under the statute by injunction and by action for damages. That section limits the damages to a maximum sum of $5000 and a minimum of $250 and provides that the sum allowed shall not be regarded as a penalty; except that the limitations do not apply to infringements occurring after notice. (Turner & Dahnken v. Crowley, 252 Fed. 749 [164 C. C. A. 589].)
By section 34 jurisdiction of all actions or proceedings arising under the copyright laws of the United States is vested in the federal courts. Section 2 provides: “Nothing in this title shall be construed to annul or limit the right of the author or proprietor of an unpublished work, at common law or in equity, to prevent the copying, publication, or use of such unpublished work without his consent, and to obtain damages therefor.”
It is asserted by the respondent that Rosen’s common law right of redress against the infringement of his right of exclusive representation of the dramatic work existed because the dramatic composition remained unpublished, and that deposit pursuant to section 11 of the copyright act did not
It is not contended that Rosen did not effect a valid statutory right, namely, the right to exclusive performance and representation dramatically of the composition on deposit with the register. The question is whether a statutory and a common law right, such as is here claimed, can exist concurrently. It is not questioned that the author or the assignee, Rosen, has the right of first publication of the dramatic composition, but Rosen is not suing for infringement of that right. The right which is the subject matter of the pending action is the claimed right to exclusive representation of the dramatic work for profit, which is the subject of the copyright held by Rosen.
In the case of a literary work, there is no right which can be protected under the statute until first publication. Upon first publication the right of exclusive property, that is, the right to multiply copies for a limited period, is that afforded by the statute. In the case of an unpublished dramatic composition the statutory right to exclusive performance or representation exists for a limited period. The duration of the right, apart from statute, of exclusive representation by the author of an unpublished dramatic work is not entirely clear. It has been said that it is not lost by public performance. (Ferris v. Frohman, 223 U. S. 424 [32 Sup. Ct. 263, 56 L. Ed. 492]; Nutt v. National Institute Inc., 31 Fed. (2d) 236, 238.) It has also been stated that by a public performance or a publication of the work with the author’s consent, the author’s common law right to exclusive performance is lost. (Palmer v. De Witt, 47 N. Y. 532, 542 [7 Am. Rep. 480]; Keene v. Wheatley, 14 Fed. Cas. 180, 201, case No. 7644. See, also, Civil Code, sec. 983.) Compliance with the statute to secure exclusive performance serves as constructive notice of the exclusive right and affords prima facie evidence of the facts stated in the certificate of registration (Nutt v. National Institute Inc., 31 Fed. (2d) 236), and therefore of the originality and innocence of the composition. The existence concurrently of the common law and the statutory copyright, as is here claimed, would permit the owner of the statutory right of exclusive representation to seek the advantages of the statute and at the same time to
The rights of one who proceeds under the statute should thenceforth be measured by the provisions of the statute. The common law right exists until the statute has been invoked and rights created thereunder, or the common law right has otherwise been abandoned; and this is so in one case as in the other. The author has the right of election, that is, he may content himself with his common law copyright, or he may elect to substitute therefor the right afforded by the statute by complying with its provisions, whereupon the extent of his copyright and the remedies for infringement are governed by the statutory provisions. Rosen’s election was made when he proceeded to secure protection of the dramatic rights in the composition under the copyright statute. He cannot make a different election now. There is no expression in any of the authorities that a common law and a statutory right may exist concurrently, as is here claimed. The contrary conclusion is indicated. “No proposition is better settled than that a statutory copyright operates to divest a party of the common law right. ” (Jewelers’ Mercantile Agency v. Jewelers’ Weekly Publishing Co., 155 N. Y. 241, 247 [49 N. E. 872, 63 Am. St. Rep. 666, 41 L. R. A. 846]; Bobbs-Merrill Co. v. Straus, 147 Fed. 15 [77 C. C. A. 607, 15 L. R. A. (N. S.) 766]; Societe des Films Menchen v. Vitagraph Co., 251 Fed. 258, 260 [163 C. C. A. 414]; Universal Film Mfg. Co. v. Copperman, 218 Fed. 577 [134 C. C. A. 305]; Cohan v. Robbins Music Corp., 244 App. Div. 697 [280 N. Y. Supp. 571], and eases cited.) The foregoing proposition appears to have found frequent expression in the decisions. It may be said that it is the outgrowth of cases involving publication of literary works, and for the most part has been applied in such cases. However, counsel has not presented nor have we discovered a ease
None of the cases relied on by the respondents involved a claim of the concurrent existence of common law and statutory copyright to protect the exercise of the same right. In Palmer v. DeWitt, supra, the action was brought to restrain the defendant from printing an uncopyrighted and unpublished manuscript drama. The court held that whatever rights the plaintiff had, existed at common law, and that the state court was the proper forum for the redress of any infringement of those rights. It was pointed out in that case that “the right publicly to represent a dramatic composition for profit, and the right to print and publish the same composition to the exclusion of others, are entirely dis
In Underhill v. Schenck, 193 N. Y. Supp. 745, 748, it was stated that the right of exclusive dramatic representation “asserted by plaintiff mu'st not be confused with any right of literary property which he might claim as an author either under the copyright statutes or at common law.” The court in that case denied relief for a violation of the copyright by production of the play on the ground that relief must be sought in the federal courts. The ease of Berry v. Hoffman, 125 Pa. Super. 261 [189 Atl. 516], recognized that section 2 of the copyright law referred to those rights existing at common law before publication, and upheld in the state forum
In the present case, as we have noted, the right created under section 11 of the copyright law is not assumed to have destroyed any common law right to the first publication of the dramatic composition. It did secure to the holder of the copyright the exclusive right to reproduce the play for profit for the term prescribed by the statute. The right thus secured was a substitute for the author’s common law right of performance, and the plaintiff in the pending action is restricted to the remedies afforded by the statute for any infringement of that right. The only court in which he may seek such redress originally is the United States District Court, as specified by section 34 of the copyright statute.
Let the peremptory writ of prohibition issue as prayed.
Curtis, J., Edmonds, J., Carter, J., Traynor, J., White, J., pro tem., and Pullen, J., pro tem., concurred.