Page 490.

the moving pictures without music is quite independent of any rights of Herbert.

[2] On the other hand, if plaintiff's claim that the work must be treated as a whole be accepted, it is difficult to escape the application of the principle that plaintiff alone can not restrain a production of the work by third parties without proof that they have not been licensed by his coowners. In this case, however, Fields, Shubert, and Smith each avers that the moving-picture production has been made with their express consent.

[3] Plaintiff concedes that a license may be given by any coowner, as held in many cases-for example, Nillson v. Lawrence (148 App. Div. 678, 133 N. Y. Supp. 293), De Witt v. Elmira Nobles Mfg. Co. (66 N. Y. 459, 23 Am. Rep. 73). He seeks, however, to take this case out of the operation of the rule by appealing to a principle indicated, though not directly held, in Osborn v. Schenck (83 N. Y., 201), quoting the following language from the opinion, at page 204:

But it also follows that if that possession [by one cotenant] develops into a destruction of the property or of the interest of the cotenant, or into such a hostile appropriation of it as excludes the possibility of beneficial enjoyment by him, or ends in a sale of the whole property which ignores and denies any other right, then a conversion is established, and trover may be maintained against the wrongdoer. But in White v. Osborn (21 Wend 75), * it was decided that the sale of the whole property, which ignored and denied the right of the cotenant, furnished sufficient proof of a conversion.

*

It will probably not be disputed that the rights of a coowner do not extend to the destruction of the article owned. To apply that term, however, to the case at bar, would be manifestly to convert words used to describe a physical result into a pure metaphor. Plaintiff urges that the production of the moving pictures to large crowds at low prices of admission "destroys" the work. While the question whether the moving picture production detracts from or adds to its value as a musical comedy may be debatable, it seems perfectly clear that any analogy sought to be derived from the total physical destruction of an article owned in common is utterly inapplicable.

[4] I come, then, to the only remaining basis on which plaintiff may seek relief, namely, a contract entered into in February, 1908, between Herbert and Fields, in which

Herbert agreed "to write and compose the music of a comic opera to be known as 'Regina,' which title is, however subject to being changed." Herbert further grants to Fields the exclusive right to produce such comic opera during the season commencing November 15, 1908, and terminating May 15, 1909. Fields agrees "not to produce such comic opera, or the book of lyrics or any part thereof, disassociated from the music" of Victor Herbert without Herbert's consent. This provision, if the defendants are bound by it, would validly limit their right to license the moving-picture production without Herbert's consent. (De Witt v. Elmira Nobles Mfg. Co., 66 N. Y. 459, 462, 23 Am. Rep. 73.)

To the manifest objection of defendants that this contract was signed by Fields alone, and did not bind Shubert or Smith, plaintiff, I think, successfully points out that under the circumstances set forth by the defendants themselves Fields may well be regarded as the agent of Shubert and Smith for the purpose of procuring the composition of the music of Herbert, and, in addition, as having ratified any contract made by Fields with Herbert by having accepted the benefit thereof. (Ramsay v. Miller, 202 N. Y. 72, 75, 76, 95 N. E. 35; White v. Kenny, 146 App. Div. 803, 805, 131 N. Y. Supp. 416.) This view of Field's agency is confirmed also by the consideration pointed out by plaintiff that, although both Shubert and Smith refer to arrangements made between Shubert and Fields to procure the conversion of the play into a comic opera, the agreements themselves are not "offered in evidence "—i. e., not annexed to the papers, nor even completely described and that therefore it may be assumed that they contain provisions directly authorizing Fields to contract with Herbert. (Klein v. East River Elec. Lt. Co., 90 App. Div. 92-97, 86 N. Y. Supp. 164; Cushman v. De Mallie, 46 App. Div. 379, 381, 61 N. Y. Supp. 878.)

The difficulty, however, is that plaintiff not merely fails to show that the comic opera "Old Dutch" was composed pursuant to the terms of the contract, but, on Page 491. the contrary, his own affidavit indicates and the opposing affidavits prove that it was not. This contract, as above recited, was executed in February, 1908. provided that Herbert should write and compose the music of a comic opera, which was to be produced during the season November, 1908, to May, 1909. It is diffi

It

cult to see how the terms of this contract can be held to apply to the comic opera "Old Dutch," involved in the present controversy, which was not produced until November 6, 1909, and the libretto of which had not even be discovered by Shubert until the fall of 1908, six months after the execution of the contract.

I cannot, of course, anticipate what proof the plaintiff may present in substantiation of his claim that "Old Dutch" was composed by him pursuant to this contract; but on this motion for a preliminary injunction, and upon the papers submitted in support thereof, plaintiff's application must be denied.

[152 New York Supplement, pp. 487–491.]

HERBERT ET AL. v. SHANLEY CO.

(District Court, Southern District New York. May 1,

1915.)

Herbert v.1. COPYRIGHTS-INFRINGEMENT-PERFORMANCE WITHOUT PROFIT. Shanley, May 1, 1915.

A performance of a copyrighted dramatico-musical composition need not be for profit, to infringe the copyright.

2. COPYRIGHTS-INFRINGEMENT PERFORMANCE.

A performance in words and music only may infringe a dramatico-musical copyright, and it is immaterial whether the performance is only of a scene or a part thereof. 8. COPYRIGHTS-INFRINGEMENT ACTS CONSTITUTING.

Authors of a comic opera, who take out a copyright on a song with orchestral accompany ment, dedicate to the public the right to sing the words to the music, accompanied by an orchestra.

In equity. Suit by Victor Herbert and others against the Shanley Company. On motion for injunction. Denied.

The plaintiffs are together the authors of a comic opera, "Sweethearts," of which Herbert composed the music and the other three individual plaintiffs wrote the words. This has been performed in New York and elsewhere, and the words and music together have been printed by the corporate plaintiff, G. Schirmer, Incorporated, which took out a copyright upon the whole opera and upon various pieces as musical compositions. The plaintiff Harry B. Smith also took out a copyright upon the libretto of the opera, in so doing complying with all formalities necessary to procuring a copyright as a dramatic composition.

The defendant owns and keeps in the city of New York a restaurant with a large dining room on the ground floor, in the center of which it has erected a stage without proscenium, wings, or back drop. Upon this stage during the evenings, and while the guests are eating, actors and singers appear, who sing songs to the accompaniment of an orchestra, and who at times accompany the songs with dancing. This is called a "cabaret." The defendant charges no admission to the dining room, and gets its profits from the food and drink sold to the guests while they listen to the performance.

In the opera, "Sweethearts," appears a solo with chorus, entitled "Sweethearts," with orchestral accompaniment, the words and music being separately published by G. Schirmer, Incorporated, and copyrighted as a musical composition. The defendant employed a singer who had purchased a copy of this song from G. Schirmer, Incorporated, to sing it to the accompaniment of a small orchestra. The performance was without chorus, not in costume, and without any further effort to reproduce the opera than is involved in singing the words and music.

The plaintiffs move for an injunction on the theory that the performance infringed the copyright of the dramatico-musical composition.

Nathan Burkan, of New York City, for plaintiffs. Francis Gilbert, of New York City, for defendant. LEARNED HAND, District Judge (after stating the facts as above). [1, 2] That the opera was a dramatico- Page 345. musical composition seems to me to admit of no question; a performance need not, therefore, be "for profit" to infringe, under the rule in Church Co. v. Hilliard (221 Fed. 229, C. C. A. —), decided by the Circuit Court of Appeals for the Second Circuit February 9, 1915. Furthermore, a performance in words and music alone infringed the dramatico - musical copyright, for words and music alone may constitute a dramatic performance (Russell v. Smith, 12 Q. B. 217), and it did not matter that the performance was only of a scene or part of a scene (Brady v. Daly, 83 Fed. 1007, 28 C. C. A. 253). So far the case is all with the plaintiffs.

[3] However, the authors took out a copyright upon the song separately as a musical composition, and in so doing they necessarily gave into the public domain all musical rights, except as they were covered by the re

sulting copyright. Whatever be the minimum of musical rights, it includes the right to perform the music publicly without any unnecessary accessories. Singing the words to the music, accompanied by the orchestra, is therefore within the musical rights so dedicated. On the other hand, we now have it, on the authority of Church Co. v. Hilliard, supra, that a public performance of this kind is not within the statutory copyright which the plaintiffs received as consideration for their dedication. It seems necessarily to follow that the performance did not infringe.

This result no doubt involves the abandonment of some rights, secured by the dramatico-musical copyright, but that is because the plaintiffs wished a double protection. There can be no justice in preserving their dramatic rights at the expense of the public's rights arising from taking out a musical copyright. Had they wished to retain a complete dramatic monopoly, they had it in their power to do so. As it is, that monopoly remains to their complete protection, except so far as its limitation is necessary to give full scope to the musical copyright. For instance, if the performance here had been anything beyond the least essentials to a musical reproduction of the copyrighted song, it would be protected; but it was not. The plaintiffs are really trying to eat their cake and have it; they would get the full benefit of a musical copyright, while they prevent the public from enjoying the corresponding rights.

The motion is denied.

[222 Federal Reporter, pp. 344-345.]

HERBERT ET AL. v. SHANLEY CO.

(Circuit Court of Appeals, Second Circuit. January 11,

Under copyright act March 4, 1909, ch. 320, 35 Stat. 1075, authorizing the copyright of musical compositions and dramatico-musical compositions, and giving one taking out a copyrght on a dramatico-musical composition the sole right to print and sell copies, and the sole right to publicly perform it, but to the author of a musical composition only the right to print and sell copies and to perform the copyrighted