205 A.D. 162 | N.Y. App. Div. | 1923
There is no reason, in this case, for departing from the rule frequently announced in this court that we will not interfere with
But if we examine the complaint and moving papers, the affidavits in opposition to the motion for a temporary injunction and the records of this court in the former litigation between the parties Underhill v. Schenck (201 App. Div. 46), the proceedings in which plaintiff seeks to enjoin, we reach the conclusion that the learned justice at Special Term was right in his decision.
In April, 1921, there was tried at the Equity Term in Kings county an action brought by John G. Underhill against Joseph M. Schenck, Richard G. Herndon and Jacinto Benavente. In that action Underhill claimed an exclusive right and property in the title “ The Passion Flower ” as applied to a dramatic composition, and sought to restrain Schenck (the plaintiff in the case at bar) and Herndon from producing motion pictures of the play under that title and to recover damages. Benavente, a noted Spanish dramatist, in 1914 wrote a play entitled “ La Malquerida,” copyrighted the Spanish version in the United States in March, 1914, and in 1916 granted to Underhill the sole right to translate, adapt the play and perform it in the English language. Underhill translated this and other plays of Benavente and in May, 1917, they were copyrighted and published by Charles Scribner & Sons. Underhill deemed the title “ La Malquerida ” ill suited to popular success and changed the title to “ The Passion Flower,” a phrase taken from one of the stanzas of the play by free translation. Underhill alleged that Schenck and Herndon were producing a motion picture production of “ The Passion Flower ” in violation of his exclusive right and property in that title. The trial court found in favor of Underhill, findings of fact and conclusions of law were filed and on May 31, 1921, a judgment was entered enjoining Schenck and Herndon from producing the motion picture play under the title “ The Passion Flower,” and decreeing damages to Underhill and that the defendants account for profits and damages before a referee named in the judgment. From this judgment
The action is variously described by counsel for appellant as a “ bill of review ” and an “ action for a declaratory judgment.” It has some of the characteristics of a motion for a new trial upon the ground of newly-discovered evidence, although it would seem that such a motion would be met with the answer that the so-called newly-discovered evidence was known to the plaintiff Schenck, who was the defendant in the former action, long before the argument of the appeal in that action, and in fact at the date of the original trial, and that Mr. Schenck said nothing about it, either to the trial court or to this court, and it would also be claimed that the alleged newly-discovered evidence would not affect the result in Underhill v. Schenck. Judgments of the court affirmed on appeal are not to be set aside on grounds like these, and if defeated litigants may begin new actions and enjoin proceedings under judgments duly rendered upon such grounds, there will be no end to litigation and no finality about the judgments of the court.
Let us examine the complaint in this “ bill of review ” in the effort to appreciate what the plaintiff is endeavoring to accomplish,
The plaintiff, appellant, Schenck, alleges in the present action:
1. That defendant Roman has commenced an action against Schenck in the United States District Court in which Roman alleges that in April, 1914, defendant Benavente sold to one Muntanola the exclusive moving picture rights in the composition “ La Malquerida ” for the entire world and for the life of the copyright of said composition. Roman alleges in his complaint that in September, 1921, Muntanola sold such exclusive rights with right of action for infringement, etc., to him, Roman. Roman alleges that in the year 1920 or early in 1921 Schenck prepared and produced moving pictures of the composition “ La Malquerida ” in violation of his, Roman’s, rights under the assignment from Benavente, and that Schenck is exhibiting said moving picture under the title “ The Passion Flower ” but “ boldly ” represents that it is adapted from and based upon the copyrighted composition “ La Malquerida,” and Roman prays for injunction and accounting. Roman’s bill of complaint is sworn to February 23, 1922 (the appeal in Underhill v. Schenck was argued in this court January 6, 1922, and decided April 17, 1922). Mr. Schenck answered Roman’s bill of complaint by answer verified May 8, 1922, denying Roman’s allegations, and denying that he was infringing any of complainant’s rights, and setting up as a separate defense that in December, 1913, the composition “ La Malquerida ” had not been registered or copyrighted and that it was published in Spain and so became public property; that any attempt subsequently made to copyright said composition in the United States or in Spain was “ futile and ineffectual.” By other separate defenses he attacks the validity of the copyright and the rights of Muntanola (Benavente’s alleged assignee) and practically charges Roman with blackmail.
So much for the Roman litigation.
The other ground upon which Mr. Schenck attacks the judgment in Underhill v. Schenck is the charge (asserted in his defense to Roman’s action) that the composition “ La Malquerida ” had been published in Spain in 1913 before registration or copyright by Benavente, and that, therefore, it was public property; and he says in his points on this appeal, “If it can be established that
2. In addition to his assertion that Benavente had assigned his interest in the composition “ La Malquerida ” to Muntanola prior to his grant of the right to Underhill, Mr. Schenck asserts that the composition had been produced openly in Spain prior to registration or copyright and was, therefore, dedicated to the public. But there is no evidence in the record to sustain this allegation of earlier production in Spain and consequent dedication of the composition to the public. The affidavit of Nayfaclt, upon which plaintiff Schenck moves for injunction in the case at bar, contains no statement of fact concerning such earlier production. Mr. Nayfack says, “ if the facts ” had been known to the Supreme Court in the case of Underhill v. Schenck the court would have dismissed the complaint. And he says: “ In view of the newly-discovered fact of publication in Spain,” etc., and “ The proof of the facts * * * was found only after great difficulty,” and “ At the present time particularly in view of the newly-discovered facts * * * the position of the plaintiff herein Schenck is most inequitable.”
There is no evidence of the alleged “ facts.” At the most there is a vague statement of hearsay evidence.
Mr. Schenck makes no affidavit in support of the motion for injunction. His original complaint in this action was verified by his attorney, and his amended complaint is unverified. And Roman, whose allegations in his complaint are cited by Schenck as evidence justifying injunction, makes an affidavit in this case in opposition to the motion for injunction in which he says: “ The deponent Nayfack offers no proof whatever of the alleged ‘ discovery; ’ he does not even say who the informant is, if any, or whether it consists of documentary evidence. He produces nothing whatever to substantiate this great ‘ fact ’ so ‘ discovered,’ upon which he bases this whole application.”
Roman makes affidavit that he notified Schenck of his claim by formal letter as early as June 21, 1921, and that this letter was written after negotiations of some • length' between Roman and
And as the respondent Underhill insists in his point IV, his judgment in Underhül v. Schenck was not based upon a, claim of copyright. It was based upon his proprietary interest in the title “ The Passion Flower.” And Mr. Justice Young expressly stated in his opinion in Underhill v. Schenck (201 App. Div. 46): “ The vital thing here is that the motion picture was produced under the same title adopted by plaintiff for the spoken drama. * * * For the violation of his exclusive right in the title, plaintiff is entitled to an injunction; for a violation of his copyright by the production of the play itself in motion pictures, he can, as I have pointed out, obtain no relief in this court.”
And the learned counsel for Mr. Schenck said in their points on appeal in this court in Underhill v. Schenck: “ Of course, it will be unnecessary to argue that if the plaintiff is claiming any relief by reason of existing copyrights that relief must be sought in the Federal courts under the Copyright Statute.”
On the whole record this “ bill of review ” or “ action for a declaratory judgment,” seems to be an attempt to avoid the judgment in Underhill v. Schenck rendered after trial and affirmed by this court.
I am also of opinion that the Supreme Court has no power to enjoin the prosecution of Roman’s action for violation of copyright in the Federal courts. It has been determined many times that exclusive jurisdiction in such actions, like infringement of patent rights, is vested in the Federal courts. (Beardslee v. Ingraham, 183 N. Y. 411; Wise v. Tube Bending Machine Co., 194 id. 272; Copyright Act of 1909 [35 U. S. Stat. at Large, 1084], § 34 et seq.; Judicial Code [36 id. 1091,1092], § 24, subd. 7; Judicial Code [36 id. 1160, 1161], § 256, subd. 5; Judicial Code [36 id. 1167], §§ 289, 291.)
I conclude that the plaintiff presented no case for a temporary injunction, and that there is reason to doubt the bona fides of his action.
The order denying injunction pendente lite should be affirmed, with ten dollars costs and disbursements.
Manning, Kelby, Young and Kapper, JJ., concur.
Order denying injunction pendente lite affirmed, with ten dollars costs and disbursements.