Page 299

ing Company the sole and exclusive right, license, and privilege to produce and present the said dramatic composition in the United States and Canada upon the stage by a company of players, reserving all other rights of every name and nature in and to the said dramatic composition unto himself, including the right to produce and present the same in motion picture photoplay form; and that the complainants herein are jointly interested as aforesaid in the said dramatic composition and all and singular the right, title, and interest thereof, and in the conduct and result of this action.

Finally, it is set forth that defendants have infringed and are infringing the copyright by the production of a motion picture photoplay entitled "Aloha Oe."

[1] From the foregoing it will be seen that the Espladian Producing Company is the exclusive licensee to produce the play "upon the stage by a company of players," and that all other rights, such as motion picture rights, remain in and were reserved by Tully, the author. When, therefore, the Espladian Producing Company became such licensee, it did so with the knowledge that Tully at any time and at any place could produce a socalled motion picture photoplay; and if Tully could do this, then, of course, any licensee of his could do the same. It seems to me entirely clear that the Espladian Producing Company has no right or interest in respect of the presentation by motion pictures of "A Bird of Paradise." Equity rule 37 (198 Fed. xxviii, 115 C. C. A. xxviii) provides:

All persons having an interest in the subject of the action and in obtaining the relief demanded may join as plaintiffs. Persons having a united interest must be joined on the same side as plaintiffs or defendants, but when any one refuses to join he may for such reason be made a defendant.

Of course, the interest referred to in the rule means an interest in law. It cannot mean anything else, and certainly cannot mean a possible injury for which a person has not retained for himself any right or redress. Gaumont Co. v. Hatch, D. C. (208 Fed. 378), does not present the same state of facts as the case at bar, for in that case two owners of a moving picture film (lessor and lessee) were joined as plaintiffs, whereas here the Espladian Producing Company has no interest whatever in the motion picture rights.

It is urged that the production by the defendants of a motion picture presentation of a copyrighted work is and will be financially injurious to the Espladian Producing Company, by diverting persons who might see

the play from attending the theater so as to go instead to the less expensive motion picture play. But that suggestion is quite beyond the point, and even if plaintiffs are right in what they think may be the injury inflicted and continuing, the Espladian Producing Company cannot complain, because that was one of the probabilities to be contemplated when Tully reserved the motion picture rights.

[2] The misjoinder of a party plaintiff having no interest, and to whom no relief can be granted, renders the complaint multifarious and devoid of equity, and therefore the complaint must be dismissed.

[3] A rather important question of practice has arisen in this case, which I will refer to for the information of the bar. Under section 25 of the copyright law it is provided:

Rules and regulations for practice and procedure under this section shall be prescribed by the Supreme Court of the United States.

In pursuance of the authority thus conferred, the Supreme Court adopted, among others, rule 2, as follows:

A copy of the alleged infringement of copyright, if actually made, and a copy of the work alleged to be infringed, should accompany the petition, or its absence be explained; except in cases of alleged infringement by the public performance of dramatic and dramatico-musical compositions, the delivery of lectures, sermons, addresses, and so forth, the infringement of copyright upon sculptures and other similar works and in any case where it is not feasible.

The practical value of this rule is well demonstrated in this case. A motion for preliminary injunction was made on the complaint and various affidavits, but a copy of the work alleged to be infringed did not accompany the complaint, nor was any excuse set forth to explain the failure to submit such a copy. Later a document was submitted which purported to be a copy of the copyrighted work. After investigation by defendants in the office of the Librarian of Congress, it was found that this copy was not accurate, and it is claimed that the differences between the copy submitted to the court and the copyrighted work on file are material, so as to go essentially to the questions which will ultimately come up for decision. Of course, I do not at this time know the merits of this claim; but the point is that the court has 76228°-17- -30

Page 300.

not had before it a copy of the work alleged to have been infringed. This situation was not, in any manner, the fault of counsel, but was due to an error (possibly inadvertent) on the part of one of the plaintiffs.

But the foregoing incident illustrates rather strikingly the importance and necessity of the Supreme Court rule. A copy of the work alleged to be infringed should accompany the complaint, or, as the rule says, its absence be explained. It sometimes happens that redress by injunction in cases of this kind must be speedily obtained in order to prevent irreparable injury, and that the plaintiff may not have at hand a copy of the manuscript, whereas he can describe, for all practical purposes, the substance of the subject matter of his copyrighted work; but the rule must be followed, and, if the work cannot be produced, satisfactory reasons for its absence must be presented.

Of course, as the rule points out, in cases of alleged infringement of certain kinds, the production of the alleged infringement is excepted, for the obvious reason that such production is either not possible or not practicable. I think that a hard and fast rule should not be laid down as to the penalty for failure to comply with rule 2. In some instances such failure would call for the dismissal of the complaint, and in other instances an opportunity should be accorded by the court, upon such terms as may seem proper, or upon no terms at all, to amend the complaint, so that it may be accompanied with the copyrighted work. In the case at bar the question is not of any practical importance, except in fixing terms upon which the process and pleading of plaintiffs may be amended.

[4] The defendants urge that certain expenses should be paid as a condition of amendment. That situation. can be dealt with on the trial of the suit, when the trial judge can determine whether the differences between the copyrighted work and the manuscript submitted to the court were of real importance, or only of minor consequence.

The motion to dismiss the bill is granted, with leave to plaintiff Tully to amend the process and bill, and with the question of costs and disbursements reserved until the trial of the suit. Under the heading of disbursements thus reserved for further consideration will be included

those to which the defendants have been put in sending telegrams from California, as well as those incurred in Washington.

Settle on two days' notice.

[229 Federal Reporter, pp. 297–300.]

UNIVERSAL FILM MFG. CO. v. COPPERMAN ET AL.

(Circuit Court of Appeals, Second Circuit. November

10, 1914.)

1. LITERARY PROPERTY-SCENARIO-PHOTOPLAY.

Universal Film Mfg. Co.

Where complainants' assignor, a Danish corporation, con- v. Copperman, Nov. 10, 1914. posed a written scenario of a play and then composed a photoplay by actual performance of the scenario recorded by a moving-picture camera, from which it took positive films and sold one or more of them in England, where neither the scenario nor the photoplay was copyrighted, it had a common-law right of property in England in the intellectual conception of the play expressed in words, and in the intellectual conception of the photoplay expressed in actions, and could perform the written play itself and license others to perform it without prejudice to its common-law ownership, and so could perform or license others to perform the photoplay in the same way.

2. LITERARY PROPERTY-MOVING PICTURES-SALE OF FILM-CONDI- Page 578.

TIONS.

Where the owner of a scenario and photoplay, neither of which was copyrighted in England, sold a positive film there, the purchaser and his assigns acquired the performing right, and though no one, by virtue of the sale, would acquire the right to reenact the play and take a negative of it or make a new negative from the positive film, the seller could not restrict the purchaser's right by a condition that the film should not be resold or hired for use except in the country in which it was bought, nor sold for exportation.

3. COPYRIGHTS-FOREIGN SCENARIO IN PHOTOPLAY.

Where the foreign owner of a scenario and photoplay took out a United States copyright on the latter separately, as it was authorized to do, it abandoned its common-law property rights therein.

4. LITERARY PROPERTY-PHOTOPLAY-SALE OF FILMS.

Where the foreign owner of a photoplay sold a positive film in England, where it was not copyrighted, subject to a void condition against resale for export, and later copyrighted the photoplay in the United States, it could not by such copyright avoid rights previously conferred by the sale of the films in England, and hence could not treat the purchaser's assignees in the United States as infringers.

Page 579.

Appeal from the District Court of the United States for the Southern District of New York.

Suit by the Universal Film Manufacturing Company against S. Copperman, doing business as the Thalia Music Hall, and another. Judgment for defendants (212 Fed. 301), and complainant appeals. Affirmed.

W. G. Morse and J. L. Lotsch, both of New York City, for appellant.

S. F. Frank, of New York City, for appellees. Before Lacombe, Coxe, and Ward, circuit judges. WARD, Circuit Judge. The Nordisk Film Company, a corporation of Denmark, composed an original written scenario of a play called the "Great Circus Catastrophe,' and then composed a photoplay by means of an actual performance of the scenario recorded by a moving-picture camera on a negative photographic film, from which it afterwards took positive films in the customary manner, to be used in performing the play by throwing the pictures upon a screen by means of a moving-picture machine. The company copyrighted neither the scenario nor the photoplay in England, as it might have done, but advertised and sold throughout Europe the positive films to anyone who chose to buy, stipulating, however, on the bill rendered that it was a condition of sale that the film should not be resold or hired out for use except in the country in which it was bought, nor exported, nor sold for export.

The defendants imported one of these positive films, which they purchased from a dealer in England, having first ascertained that there was no copyright for the photoplay in this country, and without notice of the stipulation that the same was not to be resold for export. This film they exhibited and hired out to others for the purpose of exhibition. Subsequent to the defendants' purchase the Nordisk Company copyrighted the photoplay in this country, receiving from the Copyright Office a certificate of registration as follows:

This is to certify, in conformity with section 55 of the act to amend and consolidate the acts respecting copyright approved March 4, 1909, as amended by the copyright act of August 24, 1912, that the title, a description, and one print taken from each scene or act of the motion-picture photoplay not reproduced in copies for sale named herein, have been deposited in this office under the provision of the said acts, and that registration for copyright for the first term of 28 years has been duly made in the name of Nordisk Film Co., Copenhagen, Denmark.