Gotham Music Service v. Denton Music Publishing Co.

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Comment by Charles Cronin

I have included this unfair competition state case among the (federal) copyright infringement cases of this compilation because it involves a song with an interesting past, and legal issues that brush against copyright and trademark law, as well as unfair competition on which the suit was based. Also, both the majority and dissenting opinions are superbly drafted, and the case nicely evokes pre-war New York, with the bench of the Court of Appeals a cadre of sturdy Anglo-Saxon names — Pound, Crouch, Crane, Hubbs — and counsel before it — Abner Greenberg and Samuel Jesse Buzzell – with names out of a Theodore Dreiser novel.

Because the plaintiff had no copyright or trademark interest in the song in question (“St. James Infirmary”) in order to prevail on a claim of unfair competition, the plaintiff needed to establish – according to the majority – that defendant, by applying the same title as plaintiff’s to a public domain song, was attempting to mislead consumers into thinking that they were buying the plaintiff’s publication of this song.

The dissenting opinion does not challenge the majority’s standard for establishing a claim of unfair competition. It points out, however, that consumers do not care about whether they obtain a product of a particular manufacturer but rather simply that they obtain a particular product.* The plaintiff rekindled interest in the public domain song by promoting it under a new title. If the defendant wanted to avoid competing unfairly with the plaintiff’s publication it should have sold its sheet music under a title other than that recently applied to it by the plaintiff.

The dissent nicely challenges the majority’s view, but attempts to bolster its position by the impertinent suggestion that the plaintiff’s song was a new “arrangement” of the public domain work — inserting thereby the question of original copyrightable expression — and without questioning the originality of the plaintiff’s “new” title. If the plaintiff had applied an extraordinary new title like “Happy Days are Here Again” to the public domain song “Gambler’s Blues” the defendant’s copying of it would appear to be unfairly predatory. Given the now well-documented history of the song, and eponymous locale, of “St. James Infirmary,” it seems likely that if the expression “St. James Infirmary” had not been used as the title to sheet music of the song prior to plaintiff’s publication, it had long been associated with this work by those who performed and listened to it.** By analogy, if one were to publish sheet music for “My Country ‘tis of Thee” but name it “Gracious Queen” it would be difficult to support a claim of unfair competition by another publisher who came out with “‘Gracious Queen’ or ‘My Country ‘tis of Thee”.

The audio clip above is of Louis Armstrong and his band “The Savoy Ballroom Five,” recorded in Chicago in 1928, several years before this case was decided. The lyrics given here are those of the version used in the Armstrong recording.

“St. James Infirmary” has roots two or three-hundred years old, and a colorful and complex history lovingly documented by writer Rob Walker. Walker’s work on this song is at: http://nonotes.wordpress.com/. Walker’s project references the work of Robert Harwood, whose considerable excavations on “the song and the times which gave it birth” have been published (Genius Press) as a monograph “I Went Down to St. James Infirmary.” Information about the 3rd edition of the book, and obtaining a copy of it, can be found on a blog rife with fascinating information about both the song and associated legal wrangling: https://iwentdowntostjamesinfirmary.blogspot.com/2023/10/about-1930-lawsuit-you-cannot-copyright.html.

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* The question what consumers seek and expect when they purchase a commodity is more complex than the dissent suggests. The dissent’s observation about consumers’ wishes is true of sheet music – i.e. buyers do not care whether Hal Leonard or Universal published their copy of, for instance, “Raindrops Keep Falling on My Head.” Serious musicians, however, do buy scores published by particular publishers because publishers have reputations for different editing styles that subtly affect the presentation, learning, and performance of the underlying musical work. To the extent that different editing styles exist in printed popular music, the underlying works themselves lack the complexity of “serious music” to be much affected by a particular editorial approach.

The dissent implies that consumers in the 1920s were unconcerned with the ultimate corporate source of products they purchased. It seems unlikely this was entirely true in the 1920s, and it is even less so today. Godiva chocolates, Steinway pianos, and many high-end cosmetics and perfumes, are – or recently were – made by Campbell Soup, RCA, and Unilever respectively. Lyon & Healy, the Chicago manufacturer of the finest harps, is now owned by Salvi – an Italian maker of harps of lower quality and price. Even sophisticated buyers – like those shopping for harps – may feel uneasy knowing that the ultimate source of their purchase is a conglomerate like Yamaha or Campbell’s Soup, or even a company like Salvi Harps. Imagine the disquieting frisson one might feel upon learning that the engines on the plane you are about to board were made by Pratt & Whitney, no longer a subsidiary of the U.S.’s United Technologies Inc., but rather of Italy’s Fiat, S.p.A.! Lacking the exclusive ring associated with names like Steinway or Godiva, companies like Sony, RCA, and Salvi, suppress their affiliation with their top-drawer products in an attempt to avoid cheapening them in the minds of consumers by association with their less exalted offerings.

**Robert Harwood reports that at trial defendant’s musician witnesses testified that “Gambler’s Blues” had been performed under the name “St. James Infirmary” as early as 1916 (initially in a minstrel show). Given the song’s musical genre, the performers learned and improvised by ear, and without recourse to notated music, and the court gave short shrift to the defendant’s non-documented evidence. Because the plaintiff had no copyright or trademark interest in the song in question (“St. James Infirmary”) in order to prevail on a claim of unfair competition, the plaintiff needed to establish – according to the majority – that defendant, by applying the same title as plaintiff’s to a public domain song, was attempting to mislead consumers into thinking that they were buying the plaintiff’s publication of this song.

Opinion by Judge Pound

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’ 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 copyright. 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 will 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.

DISSENT: Crane, J. (dissenting). I view this case somewhat differently from the chief judge. True, the song, called “Gambler’s Blues” became publici juris, and any one was free to use it, print copies of it, and sell it on the market. No one had or could have a restricted right to sell the song. Also, the name, the original name, “Gambler’s Blues,” followed the song, and any one could use this name in reproducing it. The plaintiffs, however, did more than this to make the song valuable. No one wanted it; it had passed out of use, had ceased to be popular; there was no demand for it. The plaintiffs made changes in tempo of the music, added a few verses and gave it a new name, “St. James Infirmary,” and then started an advertising campaign, spending thousands of dollars in making the name, “St. James Infirmary,” known to the public. Under this name the plaintiffs advertised extensively throughout the country their rearrangement of this old song.

Now comes the defendant and seeks to reap the harvest of this advertising. It publishes the old song and gives it the name which the plaintiffs have made popular, namely, “St. James Infirmary.” If they had called it by its original name, “Gambler’s Blues,” no one could complain and no rights would have been violated. This would not do; the defendant must reap the profits which legitimately should go to the plaintiffs as the result of their expenditures for advertising, and so the defendant takes “St. James Infirmary” for no other reason than to gain the reward of others’ work.

Within the principle of all the cases, this is unfair competition. I know of no reason why a name or a trade may not be built up for a song or bit of literature as well as for any commodity. When one buys Uneeda biscuits or Cremo cigars or talcum powder, no one has in mind the manufacturer; this legal phraseology is a mere fiction. The producer may change its corporate existence innumerable times and the public does not know or care. What they do know is that an ordinary bit of merchandise has, through advertising, become very popular, and they want the merchandise with that name. It is the name that counts and has been made a valuable asset. So with this old song which nobody wanted; a revised edition was given a new name; the name, through advertising, became popular, created the demand, and the sale of the song under this new name brought in much profit to the plaintiffs, until the defendant diverted it by making unfair use of the name. The whole secret of advertising is to make a name popular; a slogan sells goods when many times their intrinsic value would create no demand. I find support for these views in Fisher v. Star Co. (231 N. Y. 414, 427, 428), where we said regarding the names “Mutt” and “Jeff”: “The controlling question in all cases where the equitable power of the courts is invoked is, whether the acts complained of are fair or unfair. * * * Any civil right not unlawful in itself nor against public policy, that has acquired a pecuniary value, becomes a property right that is entitled to protection as such.”

“Unfair trade,” said Mr. Justice Holmes, in International News Service v. Associated Press (248 U.S. 215, 246), “means that the words are repeated by a competitor in business in such a way as to convey a misrepresentation that materially injures the person who first used them, by appropriating credit of some kind which the first user has earned.”

“If a copyright does not exist, or, once existing, has been lost, the name is lost too, in so far as it is merely a symbol descriptive of the copyrighted thing.” (Underhill v. Schenck, 238 N. Y. 7, 20.) Thus, the old name, “Gambler’s Blues,” is as free for use in connection with the old song as the song itself. This does not mean, however, that an established trade may not be built up for an arrangement under a new name which will prevent unfair competition by use of the same name and arrangement, even though no copyrights exist.

“The principles which interdict unfair competition in trade will protect a publisher who has imparted to his books peculiar characteristics, which enable the public to distinguish them from books published by others and containing the same literary matter, against the copying of the characteristics, though the copyright on the literary matter has expired.” ( Merriam Co. v. Straus, 136 Fed. Rep. 477; Merriam Co. v. Saalfield Pub. Co., 238 Fed. Rep. 1, cited in Fisher v. Star Co., 231 N. Y. 414, 431.) Here the copyright on the song had expired, but this did not prevent the plaintiffs from having a right to their rearrangement and the new name which they had given it, especially when through much expenditure of money they had built up a demand for the song under that name.

The full and complete answer to the plea of the defendant is to go out and sell the original song under its old name and see how far it gets with it. When the defendant refuses to do this, it is evident that it wants the benefits coming from the plaintiffs’ new arrangement and new name, which they have given the song. This is not fair. The judgment should be affirmed.