v. KLEIN ET AL. v. BEACH ET AL. (Circuit Court of Appeals, Second Circuit. January 16, 1917.) Klein 1. COPYRIGHTS-CONTRACT-“ PRESENTation on StaGE." Beach, Jan. 16, 1917. Page 109. A contract, entered into after motion pictures had become well known, the preamble of which recited that one of the parties had dramatic rights in a novel written by him, and which granted to another party the exclusive right to dramatize the novel for presentation on the stage, conveyed only the right to dramatize for performance by actors in person, not the rights to dramatize for motion-picture performance, and did not invalidate a subsequent contract granting the motion-picture rights. 2. COPYRIGHTS-CONTRACTS-IMPLIED COVENANTS. That contract, having been executed after motion-picture presentations were known, there is no implied covenant against granting rights to dramatize for motion pictures to another, to the detriment of the rights granted by the contract. 3. COPYRIGHTS-CONTRACTS-CONSTRUCTION-REVERSION. A subsequent provision of the contract, which provided that the right therein granted to a producer, who produced the dramatized version on the stage, should revert to the author and dramatist on certain conditions, does not enlarge the rights of the dramatist. Appeal from the District Court of the United States for the Southern District of New York. Suit by Philip Klein, as executor, and Lillian Klein, as executrix, of the last will and testament of Charles Klein, deceased, against Rex Beach and the Selig Polyscope Company, Incorporated. From a decree dismissing the complaint as against defendant Selig Polyscope Company, Incorporated (232 Fed, 240), complainants appeal. Affirmed. The decree below dismissed the complaint as against the defendant Selig Polyscope Company, Incorporated, on motion. The plaintiff, who held rights from the defendant Beach under a contract set forth in the opinion below, asked to enjoin Beach and the defendant Selig Polyscope Company, Incorporated, from producing a motion-picture play under a subsequent grant from Beach to the Selig Polyscope Company, Incorporated. The district judge held that Beach's grant to Klein under the contract in question did not cover motion-picture rights and that the subsequent grant therefore prevailed. Ernst & Cane, of New York City (Bernard M. L. Ernst, Melville H. Cane, and Emil Breitenfeld, all of New York City, of counsel), for appellants. David L. Podell, of New York City, for appellee. Weadock & Miner, of New York City, for defendant Beach. Before Coxe and Ward, circuit judges, and Learned Hand, district judge. LEARNED HAND, District Judge (after stating the facts as above). [1] The turning point in this case is the scope of the grant, whether by its terms it conferred upon Klein dramatic rights in the larger sense, including presentation, not only by living actors, but also by motion. pictures, or whether it was limited to "the stage" proper. The actual words of grant are these: The sole and exclusive right to dramatize the said book for presentation on the stage. The plaintiff insists, in view of Kalem Co. v. Harper (222 U. S. 55, 32 Sup. Ct. 20, 56 L. Ed. 92, Ann. Cas. 1913A, 1285) and Frohman v. Fitch (164 App. Div. 232, 149 N. Y. Supp. 633), that dramatic rights include motion-picture rights. If used alone, that is doubtless true, especially if the contract antedate the commercial use of motion pictures. [2] Yet Judge Hough, in Harper v. Klaw, D. C. (232 Fed. 609), held on a contract dated in 1899 that the words, "the exclusive right of producing such dramatic version on the stage," did not give to the grantee any motion-picture rights, although it is true he also held that such a grant raised by implication a negative covenant against destroying the effect of such a grant by motion pictures. That decision would avail the plaintiff here, if the date of this contract had been so early; it will hardly serve at the end of November, 1911, long after motion pictures had become common, and the distinction between them and the stage proper had for all purposes become well fixed. There is no basis for an implied negative covenant, because the situation has not changed since the contract was made, so as to create an unexpected situation, if the terms be strictly interpreted. We start, therefore, with a grant prima facie of "stage" rights only. In the preamble of the contract the distinction is already indicated between "stage" rights and general dramatic rights; thus, Beach is recited as having "dramatic rights" in the novel, while Klein is only "to dramatize the said book for presentation on the stage," which is to result in a "play," the exclusive rights in which are to go to the Authors' Producing Company. The grant follows the scheme of the preamble. Beach's grant to Klein is what we have quoted; Beach and Klein's grant to the Authors' Producing Company is an exclusive license to produce this "play" on the stage. The word "play" is specifically defined as covering all the results of the exercise of Klein's dramatic rights, and as the Authors' Producing Company has sole license to produce the play on "the stage" (the very word used to limit Klein's rights), it follows that the Authors' Producing Company's license is as broad as Klein's right. Nobody asserts that the Authors' Producing Company got any license to produce motion pictures, if Klein had made such a scenario. The context puts that question beyond any doubt. [3] Some point is made of the clauses securing the reversion of the Authors' Producing Company's rights to Klein and Beach, but it only serves to help the defendants. No rights in reversion from the Authors' Producing Company can give Klein any motion-picture rights, if by hypothesis the Authors' Producing Company's rights are limited to "stage" producing proper. On the contrary, such reversion was perhaps thought necessary to revest in Klein and Beach any rights of producing whatever, because the grant to the Authors' Producing Company was as broad as any rights created by the contract. In any case the reversion enlarges nothing. In general, it is quite clear that this was the pervading purpose of the parties. Klein was to make a play out of the book, and the Authors' Producing Company was to produce it; if they failed, Klein and Beach might try it together. There is no intimation that Klein should have further rights to make, not a play, but a motion-picture scenario. Such a scenario is hardly a "play" for "presentation on the stage." We have this language to construe at a time when the different requirements of 66 screen" and "stage" were well understood, and with them the need of writing two quite separate kinds of dramatization. We see no reason in the face of that situation to suppose that the language was used out of its natural meaning, or in disregard of a well-established convention which was applicable. Hence we confine the contract to the enterprise before the parties and to such. subsequent ventures as the reversions might enable Klein and Beach to undertake. Therefore we find that there was no implied covenant, and that the grant is limited. As Beach has not appealed, we do not wish to be understood as holding that the complaint states a cause of equity against him. Decree affirmed, with costs. [239 Federal Reporter, pp. 108-110.] SAALFIELD PUB. CO. ET AL. v. G. & C. MERRIAM CO. (Circuit Court of Appeals, Sixth Circuit. January 13, 1917.) Nos. 2855, 2856. 1. COURTS-APPEAL-WAIVER OF ERRORS-FAILURE TO ARGUE. Errors assigned but not insisted upon nor argued, as 13, 1917. 2. APPEAL AND ERROR-PROCEEDINGS AFTER APPEAL-CHANGE OF Where the original bill for injunction against unfair competition was framed, and the case was tried, and an ap peal determined, on the theory that certain dictionaries published by defendants were revisions of a dictionary the copyright of which plaintiff had owned before its expiration, plaintiff could not, after a decree permitting the use of the title to the copyrighted dictionary under certain restrictions, and after more than four years of litigation, change the theory of the case by alleging that defendants' dictionaries were in fact revisions of a different dictionary so as to show fraud in the use of the title of plaintiff's dictionary. 3. APPEAL AMEND. AND ERROR-EFFECT OF DECISION-PERMISSION ΤΟ Permission granted by the appellate court to file in the court below a supplemental bill does not bind the court as to the validity of the new claims sought thereby to be presented. 4. TRADE-MARKS AND TRADE-NAMES-UNFAIR COMPETITION-TITLE OF BOOK. Where plaintiff, who had succeeded to the rights of the author of Webster's dictionary, the copyright to which had expired, had published for several years a smaller dic76228°-17-37 Page 2. tionary which it called Webster's Collegiate Dictionary, and which had a large sale among the class of purchasers for whom it was intended, a publication by defendants of a dictionary known as Webster's Intercollegiate Dictionary, which was similar in size and style and intended for the same class of purchasers, was unfair competition which can be restrained, though plaintiff had lost its exclusive right to the use of the title Webster's Dictionary. 5. TRADE-MARKS AND TRADE-NAMES-RIGHT TO TRADE-MARK-DESCRIPTIVE WORD SECONDARY MEANING. It is not essential to the right to the exclusive use of a descriptive word in a trade-mark, on the theory that it had acquired a secondary meaning as designating a particular product, that the personal identity of the maker of that product should be known. 6. TRADE-MARKS AND TRADE-NAMES-RIGHT TO TRADE-MARK-DeSCRIPTIVE WORD. Where the original title of a dictionary had been used by plaintiff, who had the right to publish it, to designate numerous subsequent editions and revisions, so that, notwithstanding the expiration of the original copyright, the title had acquired a secondary meaning as designating the series of dictionaries published by plaintiff, the fact that the latest of those dictionaries bore little resemblance to the original does not establish such deception as will deprive plaintiff of his right to protection in the use of the descriptive word. 7. TRADE-MARKS AND TRADE-NAMES-Infringement DesCRIPTIVE WORD-DISTINGUISHING NOTICE. Where a descriptive word has acquired a secondary meaning as designating plaintiff's product, and the use of defendant's name on his product bearing the same descriptive word will distinguish it, that is sufficient; but, where the use of his name will not sufficiently distinguish the product as defendant's, he can be required to use a notice indicating that it is not plaintiff's product. 8. TRADE-MARKS AND TRADE-NAMES-DESCRIPTIVE WORD-SECONDARY MEANING-NOTICE. Though the title of a dictionary, the copyright on which had expired, had acquired a secondary meaning as designating the series of dictionaries published by plaintiff, one reprinting the original dictionary after the expiration of the copyright, and long after plaintiff had ceased publishing and selling that edition, need only insert his name as publisher on the title page; but where defendant publishes a dictionary departing from the original as much as plaintiff's latest dictionary, which had acquired an extensive reputation of its own, and resembling the latter in appearance, defendant can be compelled to use a notice that its dictionary is not published by the original publishers, or their successors. |