The plaintiff testified in substance that he had written and delivered the sketch as required by the contract: that the defendant expressed satisfaction with it, but suggested some changes; that the changes were made. and the sketch returned to the defendant: that from time to time he asked the defendant when he would produce the sketch: that the defendant said it would be produced between the 1st and 20th of January, 1913; that thereafter the production was put off from time to time and the sketch has never been produced. The plaintiff claims that under the contract the defendant was bound to produce the sketch within a reasonable time, and that he has willfully refused to carry out that part of the contract, by reason of which the royalties have become due and payable.

The defendant contended that the plaintiff had never delivered to him a sketch that was satisfactory under the terms of the contract; that changes requested by the defendant were never made, and in substance that the sketch was unproducible; and that under the contract no royalties were to be paid unless the sketch was produced, and the defendant might or might not produce it, as he pleased.

Instead of construing this contract for itself, the court left it to the jury to determine what the contract meant, and the jury evidently found that the defendant had agreed to guarantee a 70 weeks' production and a consequent payment to plaintiff of $25 for each week, and that the defendant had unreasonably and willfully broken his contract, and was therefore liable to pay as if the play had been produced. Thus the case was submitted to the jury upon the erroneous theory that the jury were to determine the meaning of the contract, leaving the jury at liberty to find that there was an absolute guaranty of the payment of royalties for 70 weeks.

[1] There is nothing in this contract to raise a doubt as to the meaning of the contract. It contains no provision requiring the defendant to produce it for a period of 70 weeks, or, indeed, for any length of time. It is simply an agreement on defendant's part to accept a sketch from the plaintiff, if satisfactory to him, and to pay $250 therefor, and in case he produced it at any time to pay royalties to the plaintiff at the rate of $25 each week of its production, not exceeding 70 weeks, the sketch thereafter to become the absolute property of the defendant.

[2] The point that the contract created no liability on the part of the defendant unless the sketch was produced was sufficiently raised by the defendant's motions to dismiss, which motions were specifically based upon the ground that the plaintiff had failed to prove a cause of action. These motions should have been granted, and the denial of them was error requiring the reversal of the determination of the appellate term and the judgment and order of the city court.

The determination of the appellate term and the judgment and order of the city court are reversed and the complaint dismissed, with costs in all courts. Order filed. All concur.

[160 New York Supplement, pp. 93–95.]

KLAW ET AL. v. GENERAL FILM CO.

(Supreme Court, Special Term, New York County. March 3, 1915.)

LITERARY PROPERTY-RIGHT IN TITLE OF PLAY-INFRINGEMENT BY
MOTION PICTURE" PROPERTY RIGHT.”

Where plaintiffs produced a play under a certain title on
the legitimate stage, large sums of money being spent for
its production, and the presentation was a success, and de-
fendant produced a dissimilar moving-picture play under
the same title, plaintiffs could restrain the use of such
title, since the name by which a composition or theatrical
production has become known to the public becomes a
property right," which may not be infringed by any one
for profit by using the name to the owner's injury.

66

Suit by Marc Klaw and others against the General Film Company. Judgment for plaintiffs.

Mortimer Fishel, of New York City, for plaintiffs. Leroy D. Ball, of New York City, for defendant. PLATZEK, J. Some five years ago Robert Hilliard, one of the plaintiffs, a popular and gifted actor, first produced an elaborate dramatic production entitled "A Fool There Was" at the Liberty Theater, in the city of New York. From that time the play has been presented and is now being produced throughout the United States and Canada with success, both from an artistic and financial standpoint. Large sums of money have been expended by the plaintiffs for actors, actresses, hiring of theaters, the equipment of the play, and in extensive advertising for more than four years. After the dramatic represen

Klaw v. General Film Co., Mar. 3, 1915.

Page 989.

tation, "A Food There Was," acquired a reputation and its title became well known the defendant appropriated the title, "A Fool There Was" and produced it in connection with one of its photo dramas, with knowledge that the plaintiffs had been and were producing a dramatic representation under such title. It appears that the title, "A Fool There Was," is an original title in connection with a play, and that no other play under such title was presented prior to the production of the drama by Robert Hilliard. The circumstance that defendant's play is dissimilar to plaintiff's play, or that it was produced as a photoplay, does not militate against their right to enjoin the appropriation of and use by the defendant of the title.

The question, "What's in a name?" has been answered by the courts in many well-considered cases, wherein the exclusive right to a name possessed or owned by a successful business enterprise has been maintained against imitators and wrongdoers, who sought by an unauthorized use to deceive the public and profit by the wrong. (Frohman v. Payton, 34 Misc. Rep. 275, 68 N. Y. Supp. 849; Hopkins Amus. Co. v. Frohman, 202 Ill. 541, 67 N. E. 391; Outcault v. Lamar, 135 App. Div. 110, 119 N. Y. Supp. 930; 38 Cyc. 837.)

In Aronson v. Fleckenstein, C. C. (28 Fed. 75), it is stated:

*

The name given the composition by its author, and under which it has become known to the public, became, as it seems to me, a property right-not strictly on the principle of a trade-mark, but because the name and literary composition became blended and united, so that the name identifies the composition to the public-so that the name of this composition belongs to this complainant as identifying and describing his literary property and as a part of the piece itself, and defendants have no right to profit by using this name to the injury of complainant, and defendants have no right to avail themselves of the merits and popularity of complainant's play to draw audiences to the performance of theirs, even if, as is claimed, their composition is a new and original dramatic arrangement. It is a fraud upon the public, as well as upon the complainant, to attempt to do so. In Ball v. Broadway Bazaar (194 N. Y. 435, 87 N. E. 674), Werner, J., writing for the court, says:

Although we agree with the learned appellate division in recognizing the technical distinction between trade-marks and trade names, we think the same fundamental principles of law and equity are applicable to both. "All such cases, whether of trademark or trade name, or other unfair use of another's reputation, are concerned with an injurious attack upon the good will of a rival business; customers are diverted from one trader to another, and orders intended for one find their way to the other."

(Sebastian on the Law of Trade-Marks, p. 17.) Trade-marks and trade names are in reality analogous to the good will of the business to which they appertain. The trade-mark represents it in the market, and the trade name proclaims it to those who pass the shop. In either case such unfair conduct as is calculated to deceive the public into believing that the business of the wrongdoer is the business of him whose name, sign, or mark is simulated or appropriated constitutes the gist of the offense.

It was also held in this case that:

Trade names are protected by the application of the same principles of equity that relate to technical trade-marks. (Howard v. Henriques, 3 Sandf. ch. 725; Glen & U. Mfg. Co. v. Hall, 61 N. Y. 226, 19 Am. Rep. 278; Paul on Trade-Marks, 182.)

It is not disputed that plaintiff's play was produced with success by leading actors and actresses in the principal cities of the United States, and was a valuable theatrical production. It is not disputed that the defendant presented a moving-picture presentation under the title "A Fool There Was." It affirmatively appears that the defendant produced its photo play under said tile in different cities of the Union no less than 3,000 times without authority. In Kalem Co. v. Harper (222 U. S. 55, 32 Sup. Ct. 20, 56 L. Ed. 92, Ann. Cas. 1913A, 1285), it is held that the owner of dramatic rights might forbid the dramatic representation by moving pictures, and to the present time the only right to protect moving pictures arises from the words "dramatic" or "drama." (Photo Drama Co. v. Social Corp'n, D. C., 213 Fed. 374377; Atlas Mfg. Co. v. Smith, 204 Fed. 398, 122 C. C. A. 568, 47 L. R. A., N. S., 1002; Frohman v. Fitch, 149 N. Y. Supp. 633.) The plaintiffs have established and acquired an exclusive proprietary right as a trade name and trade-mark in the words "A Fool There Was" as a title in connection with their play, and they are entitled. to a permanent injunction restraining the defendant from the continuance of the infringement and impairment of their right in and to such trade-mark or trade

name.

Judgment for plaintiffs. An interlocutory decree may be entered herein, making final the injunction to restrain Page 990. defendant from the further use of the title "A Fool There Was," and for an accounting by the defendant, and for this purpose the appointment of a referee. Submit findings of fact and conclusions of law, and form of interlocutory decree.

[154 New York Supplement, pp. 988–990.]

KLEIN ET AL. v. BEACH ET AL.

(District Court, Southern District New York. February 23, 1916.)

1. COPYRIGHTS-CONTRACT RELATING TO DRAMATIC RIGHTS IN COPYRIGHTED BOOK CONSTRUCTION "PRESENTATION ON THE STAGE."

The writer of a novel, who owned all rights therein, a dramatic writer, and & theatrical producer entered into a contract in 1911 by which the novelist granted to the dramatist the exclusive right to dramatize the book "for presentation on the stage," and both granted to the producer, on terms stated, the exclusive right to "produce, perform, and represent the said play * * on the stage," for which it was to pay a royalty, to be divided equally between them. The contract further provided that in case of failure of the producer to comply with its terms, or on its termination otherwise, all rights in the play granted to it should revert to the other two parties. Held, that the phrase "presentation on the stage," construed in connection with other provisions respecting production of the play by stock companies, stage scenery, etc., had reference only to the production of the spoken play in theaters, and that as, at the time the contract was made, the production of moving picture plays was a well-known business, it was not intended that the contract should carry the exclusive right to dramatize the novel for that purpose, but that such right remained in the author.

2. COPYRIGHTS-CONTRACT RELATING TO DRAMATIC RIGHTS IN COPYRIGHTED BOOK-EFFECT OF AMENDMENT OF STATUTE.

The rights of the parties under such contract were in no way affected by the subsequent amendment of the copyright law (act Mar. 4, 1909, ch. 320, sec. 5, 35 Stat. 1076) by act August 24, 1912, ch. 365, 37 Stat. 488 (Comp. St. 1913, sec. 9521), so as to permit the separate copyrighting of motion picture plays.

3. COPYRIGHTS-CONTRACT RELATING TO DRAMATIC RIGHTS IN COPYRIGHTED BOOK-CONSTRUCTION.

On the subsequent termination of the contract with the producer for its default, all rights in the play written by the dramatist reverted to him and the author of the book as tenants in common, and either had the right to license its use, subject to the obligation to account to the other for one-half the profits.

In equity. Suit by Philip Klein, as executor, and Lillian Klein, as executrix, of the will of Charles Klein, deceased, against Rex Beach and the Selig Polyscope Company, Incorporated. On motion to dismiss bill.