1886, of this court, to answer to any indictment which should be then found against him for the offense alleged in the complaint. At that term, on the day on which the grand jury were summoned to attend, and before they were sworn, and again after they were sworn, and before they were charged by the court, he presented a challenge in writing to the array of the grand jury, because all the grand jurors had been drawn and summoned and returned as stated in the first four pleas in abatement, as in U. S. v. Richardson, ante, 61. To this challenge the district attorney demurred ore tenus. Wilbur F. Lunt and Dennis A. ]I,[eaher, for defendant. George E. Bird, Dist. Atty., for the United States.
GRAY, Justice. The opinion in U. S. v. Richardson, ante, 61, just decided, disposes of all the questions in this case except one. The order of the circuit court of January 18, 1884-, in the same terms as the order of the district court of the same date, set forth in that opinion, is signed by the district judge only; and it is contended, on the authority of Amis v. Smith, 16 Pet. 803, that a rule of the circuit court, made by the district judge alone, is of no validity. It is a sufficient answer to this objection that, by the terms of the act of June 30, 1879, c. 52, § 2, "any judge" is authorized to order the names of jurors to be drawn from the boxes used by the state authorities. Challenge adjudged bad.
ARONSON V. FLEOKENSTEIN
(Circuit Court, N. D. llUnoia. July 6, 1886.)
1. COPYRIGHT-DRAMATIC COMPOSITION-IMITATION PRoHmITED BY INJUNCTION.
An original operetta, consisting of libretto, score, and name. is property common law, which, so' far as unpublished, will be protected from fraudulent imitation by injunction.
An operetta may be so far an original dramatic composition as to entitle it to protection as literary property, although it is an adaptation of an old play.
2. SAME-DRAMATIC COMPOSITION-WHAT IS ORIGINAL COMPOSITION.
3. SAME-WHAT IS PUBLICATION OF NAME OF.
Publication of the songs and vocal score of an operetta, with the name 01 the operetta, does not make such name public property. Suit for protection of property at common law in a dramatic composition g., an operetta, can be brought only by th& licensee of a general owner, where such licensee has an exclusive lIcense for a definite period, and, by the terms of his license, is to bring all suits for the protection of his rights.
4. SAME-PARTY TO BRING SUIT FOR INFRINGEMENT.
5. SAME-PART OWNER MAY SUE FOR INFRINGEMENT. A part owner of a dramatic composition may protect his property by suit
against a wrong-doer.
by Russell H. Curtis, of the Chicago bar.
Flower, Remy Gregory, for complainant. E. A. Otis and Frank F. Reed, for defendants.
BLODGETT,. J. The bill in this case prays an injunction restraining defendants from producing, at the New Casino theater, in this city, the operetta of Erminie, and alleges, in substance, that in March, 1886, complainant acquired from Harry Poulton, Willie Edouin, and Frank Sanger the sole and exclusive right to produce in the United States and Canada the operetta known as Erminie; that he has, at great expense for advertising, scenery, etc., produced the operetta at the Casino, in New York, where it has met with great success; that prior to its purchase by complainant said operetta was the sole and exclusive property of Poulton; that the same was by him composed and written, and has never been published, nor in any manner dedicated to the pnblic; that in April last complainant caused tbe ,title or name of Erminie, as applied to said operetta, to be copyrighted in the office of tbe librarian of congress, in pursuance of the laws of the United States; that defendants, in violation of complainant's rights, have advertised to produce, and have produced, at a place of amuse· ment in this city called the New Casino, the operetta of Erminie, announcing it as the "latest New York success, playing at the Casino, New York" and Avenue Theater, London, to crowded houses," et<1. "This is the first production of Erminie outside of New Yqrk city," etc. The proof from the affidavits on file shows that, under the management of defendants Fleckenstein & Gunning, there was produced, on the twenty-sixth of June last, and has daily been played since that time, at the place of amusement in this city known as the New Casino, an operetta by the name and title of Erminie; that before its production, and before notice was served by complainant on the managers, it was announced and extensively advertised by the defendants' managers of the New Casino that they would, on the twentysixth of June, produce at the New Casino "New York's latest SUCCt:lSS, Erminie," and I can have no doubt but that defendants intended to make the public believe that the operetta to be produced by them was the same as the one by the same title which had been produced, under complainant's management, at the Casino, in New York city, where it had met with signal success and public approval. After being notified by complainant that he had the sole right to produce Erminie or authorize its production in this country, and that legal steps would be taken to prevent interference with his rights, the defendants' managers of the New Casino have modified their placards and advertisements by omitting all allusions to the New York operetta, but they still continue to play substantially the same piece, by the same title. It is admitted that before complainant acquired the right to the piece in this country the songs and vocal score had been published
ARONSON tI. FLECKENSTEIN.
and put on sale, in England and the United states, with the consen' and knowledge of the owners of the composition; but it is insisted, and the affidavits filed show, that the orchestration and orchestra parts and libretto of the operetta·have never been published. Defendants insist, and their affidavits tend to show, that their operetta of Ermipie, as played at the New Casino, is an original and new composition, the libretto of which was written by Fred. Dickson; that they have adopted, as they lawfully might, the songs and vocal score of Erminie, the music of which was by Jacobowsky; and that their orchestration and orchestra parts were wholly written and composed by Profs. Hoffman and Wheeler, of this city; and that the orchestration and orchestra parts are not copied from, and do not low or imitate, the corresponding parts of complainant's operetta. It must, I think, be considered as proven that the complainant's operetta is founded upon the old and well-known drama of Robert Macaire; but the title, dialogue, minor characters, scenery, and dramatic situations, which, with tile orchestration, orchestra parts, songs, and music, make up the operetta, seem to be so far different as to entitle the piece, as a whole, to the claim of originality, and it is admitted by defendants that Mr. Dickson, the author of their libretto, bas taken his piece almost wholly from the same old play. So far as I have had time to compare tile two librettos, the defendants' piece seems to me to betray an attempt to avoid copying the Poulton libretto; but many of the situations, and much of the dialogue, and the traits developed by his characters, would seem to indicate, or suggest, at least, that his arrangement is modeled upon Poulton's. Defendants contend (1) that they have the same right as Poulton to write an operetta founded upon the story and incidents of Robert Macaire, and that they have not copied or adopted the Poulton composition; (2) that, by the publication of the songs and voaal score of the Poulton operetta, with the title of the operetta, the title has become public property. I think the proof now before the ,court shows that the name "Erminie," as applied to an operetta, originated with the authors of com. plainant's operetta; and that, by the p.ublication of the songs and vocal score of the operetta, they have not given to the public the right to use the name as applied to any other libretto, dialogue, and Orchestra parts; that the publication of the songs only gave to the public that which was published, and does not authorize the use of the name as applied to the operetta as a whole. The case, as now made by the proof, shows an attempt by defendants to avail themselves of the reputation and popularity which has been achieved by the operlltta of Erminie, as exclusively owned and produced by complainant, by bringing out a piece with the same name and. Bongs, but with colorable changes in the text of the dialogue and dramatic arrangement. The Poulton operetta, with the name of Erminie, being so far an original composition as to entitlb it to protec-
tion as a piece of literary property, the name given the composition by its author, and under whioh it has beoome known to the publio, beoame, as it seems to me, a property right,-not strictly on the principle of a trade-mark, but beoause the name and literary composition became blended and united, so that the name identifies the oomposition to the publio,-so that the name of this oomposition belongs to this oomplainant as identifying und desoribing his literary property, and as a part of the pieoe itself, and defendants have no right to profit by using this name to the injury of complainant. '1'he law is now too well settled to require the oitation of authorities, that the playing of a dramatic composition is not such a publication as makes the composition publio property; and I think it equally olear that an author who' has given a particular title or name to his oomposition is entitled to have that name protected. The proof shows that oomplainant has put his play before the publio in New met with such approval as makes it York oity, and that it has probable, if not certain, that the piece will have a successful run in the other cities and towns of this country; and defendants have no right to avail themselves of the merits and popularity of oomplainant's play to draw audiences to the performanoe of theirs, even if, as is claimed, their compositivnis a new and original dramatic arrangement. lt is a fraud upon the publio, as well as upon the complainant, to attempt to do so. . I do nOG deem it necessary, for the purposes of this motion, to oonsider whether complainant has acquired any additional right to the name of his piece by registering the title with the librarian of congress under the oopyright laws of the United States, as I think his common-law right to the name is sufficient for his protection. Nor do the merits of the respective compositions enter into the question now before me. For aught I know, or am at present advised, the defendants' piece may be the most meritorious of the two, as a literary and musical comp08ition; but the palpable fact now before me, by the proof, is that the defendants' are endeavoring to avail themselves of the reputation made by complainant for his composition, by his enterprise, skill, and experience as a manager, and this I do not think defendants should be allowed to do. lt is also urged that complainant is only a licensee, and therefore cannot sue in his own name. He is, however, the exclusive licensee for two years, with an option for an extension, and, by the terms of his license, is to bring all necessary suits for the protection of his rights, and hence is, I think, the only one to bring suit for infringement in this country and Canada. It is also p.rged that the proof shows that the opera, .6>1:' a whole, was the joint of Poulton, Bellamy, and JacoQo:wsky; t.he two first named being the authors of dialogue, draplatic and scenic situations an4 and thtl musiobyJacobowsky;and that complainant show that he is owner pf Bellamy's .intljlrest.
BARONY t1. EHRICH.
The bill, which is swom to, avers that Poulton became the sole owner of the entire operetta, and that complainant acquired his title. But even if the bill and proof did not show that complainant is clothed with the control of all the interests in the piece, it does show that he has acquired Poulton's interest, and that is enough to protect him against a wrong.doer. I have discussed the case for the purposes of the motion for injunction mainly upon complainant's right to be protected in the name; but complainant insists that the defendant's piece is not in fact an original composition, but is an infringement upon the dialogue and dramatic arrangement of bis operetta. This question, however, will be more appropriately considered at the final hearing, in the light of the proof as shall then appear. The injunction is allowed as prayed.
June 24, 1886.)
(Oircuit Oourt, 8. D. New York. 1.
St. U. S. § 4965. Under section 4965, Rev. St. U. S., relating to the infringement of copyrights, the actual infringing prints can alone be recovered, and when the prints are out of the possession and beyond the control of the infringer the proprietor of the copyright cannot recover of him their value in an action at law.
SAME-FORMER JUDGMENT-BAR TO RECOVERY.
Judgment entered in a former action against a lithograph company, by whom prints were printed for an of a copyright, is a bar to further recovery by the proprietor of the copyrIght in an action against the infringer for the value of the prints.
At Law. Tried by the court. This is an action to recover $535, the value of 70,000 lithographic copies of a photograph of Oscar Wilde, copyrighted by the plaintiff. These copies were printed by the Burrow·Giles Lithographic Company for the defendants, and published and circulated by them. Prior to commencement of this action they had all passed out of the posses\3iqn of the defendants. The defenses are: First. That under section 4965 of the United States Revised Statutes the actual infringing prints can alone be recovered. There is no provision of law by which the plaintiff can obtain judgment for their value. Second. That after the distribution by the defendants as aforesaid the plaintiff commenced an action against the lithographic company and recovered the money value of all copies printed and sold by it, including those in controversy. The judgment entered in that action has been paid, and is a bar to a further recovery. Section 4965 is as follows: