Gotham Music Service, Inc. v. Denton & Haskins Music Publishing Co.

Pound, Ch. J. Some years ago, as far back as 1925, a song called “ Gambler’s Blues ” was sung and played throughout the country. It was a melancholy ballad purporting to have been sung by a gambler in a barroom after he had seen his sweetheart lying dead in the infirmary. It was not a copyrighted publication. Both song and melody became publici juris or of public right. Any one was free to produce them. In March, 1929, the plaintiffs revived the old song under the title “ St. James’ Infirmary.” The infirmary heretofore unidentified was given a name. They put forward an advertising and publicity campaign to sell the old composition under the new name. They made the song popular. In or about March, 1930, the defendant, a rival music publishing house, put on the market the same song and melody under the title “ St. James’ *89 Infirmary or Gambler’s Blues.” Its nominal purpose was to link both titles under one name so that a customer who called for either might be supplied. The defendant has been restrained from using the title “ St. James’ Infirmary” or any simulation or imitation thereof as the title of a (i. e., any) musical composition and judgment for damages has been entered against it. Infringement of copyright is not involved. Respondents’ brief so states and the complaint contains no claim that copyright property has been misappropriated. If such were the grievance, the remedy would be in the Federal courts. (Underhill v. Schenck, 238 N. Y. 7.) Plaintiffs have no property in the name “ St. James’ Infirmary.” The name describes the song and, generally speaking, any one may use it to describe the same song. (Black v. Ehrich, 44 Fed. Rep. 793; Atlas Mfg. Co. v. Street & Smith, 204 Fed. Rep. 398, 404; Merriam Co. v. Syndicate Pub. Co., 237 U. S. 618.) The plaintiffs must establish that defendant’s acts amount to an unlawful abuse of competition by creating a reasonable likelihood of deception; that persons who desire the song and melody because plaintiffs have made them popular may be misled by defendant into thinking that they are purchasing the plaintiffs’ version of the song. This they have wholly failed to accomplish. Defendant is not deceiving the public. The song is popular, not because plaintiffs publish it, but because they have advertised it and thus made it known to the public. Their names are not identified with the new name. The demand is for the song and not for the publisher. In Fisher v. Star Co. (231 N. Y. 414, 433) the equitable power of the court was invoked to restrain the use by others than Bud Fisher, the plaintiff, of the well-known “ Mutt and Jeff ” newspaper cartoons or humorous strips to which he had by his skill given a financial value although he had not at first protected them by copy *90 right. The court held that “ no person should be permitted to pass off as his own the thoughts and works of another.” (White Studio, Inc., v. Dreyfoos, 221 N. Y. 46.) Fisher was so identified in the mind of the public as the creator of “ Mutt and Jeff ” that it would be unfair to him to permit others to put out their drawings of “ Mutt and Jeff ” in competition with his own drawings. The situation here is quite different. A name which is descriptive of one song may not be attached by a competitor to another when the duplication will mislead the public into the belief that the two songs are alike, but the name, so far as it is a symbol descriptive of the old song, is not protected unless it is identified with the source or origin of production. (Underhill v. Schenck, supra.) Here it is sought to protect the title because plaintiffs invented it but no question of imitation or deception or mistake arises. No unlawful competition in trade is shown, nor breach? of contract or trust. In the absence of the use of the name in such a way as to create a likelihood that people wall be misled, the name is publici juris and may be used by all. The judgment of the Appellate Division should be reversed and the complaint dismissed, with costs in all courts.