(1987) Carswell Nat. 637 (Fed. Ct.)
Complaining Work |
Defending Work |
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Cyril Verge “It’s a Brand New World”
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Steven Benderoth “Hockey Night in Canada”
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Comment by Robert Cason & Daniel Mullensiefen
The main focus of the court was whether the plaintiff’s copyright had been infringed in the lyrics, “It’s a Brand New World,” but they also addressed whether there existed any similarity in the musical scores of both works.
The defendant failed on both counts to demonstrate that his lyrics were the source of the phrase and the court determined that there was no objective similarity in the musical aspect of the works.
Expert’s Opinion:
“Dr. Morey compared the musical scores of the plaintiff’s and the defendant’s respective songs, and he heard and listened to them as performed on the tape, Ex. 19. He testified that: the plaintiff’s and the defendant’s works are not musically similar; the melody or harmony are “not remotely similar”; the musical phrases for the words “it’s a brand new world” are “distinctly different”; those for the words “do what you want to do” are “quite dissimilar with nothing in common”; and, as to possible objective similarity between Exs. 2 and 27, it is “not in my ears”. Dr. Morey’s testimony, unshaken on cross-examination, is conclusive of the issue of infringement of the plaintiff’s copyright in his song. The defendant’s music is not a copy and there has therefore been no infringement by means of it.”
Opinion by Judge Muldoon
This action, having been instituted in 1971, as its roll number indicates, is almost as old as the Court itself. The
plaintiff sued the defendants for alleged breach of copyright in the song, “It’s a Brand New World”. During the past
15-1/2 years the action against the defendant Cockfield, Brown & Company Limited was discontinued because of
that defendant’s grave plight and the uselessness of pursuing it. Imperial Oil Limited is the surviving defendant.
The plaintiff was, at the outset, counselled and represented by that renowned lawyer, Donald F. Sim, Q.C.,
now deceased, who formulated the statement of claim herein and conducted examinations for discovery on behalf of
the plaintiff. The plaintiff, however, parted company with his first counsel in February 1983, 11-1/4 years after insti-
tuting this action, at a time when, he avers, the plaintiff was “seriously ill and financially exhausted”. There was one
further solicitor of record during the next 8 months, until October 1983, since which time the plaintiff has carried the
litigation by himself.
For the reasons expressed and developed hereinafter, the plaintiff’s action will be dismissed, with costs in the
defendant’s favour.
The plaintiff is a natural-born citizen of Canada whose provincial domicile is Nova Scotia. The remaining de-
fendant (hereinafter sometimes called: Imperial Oil) is a company incorporated under the laws of Canada, whose ma-
jority owner is Standard Oil of New Jersey, now called Exxon.
The plaintiff, by his testimony and other evidence has established as a fact that during the latter part of 1966
and early 1967 he had composed and written the lyrics of a musical work with the title: “It’s a Brand New World”.
He soon obtained a certificate of registration of a claim to copyright (Ex. 1), class E (foreign), registration No. Eu
998619, in the United States of America. It states that the claim of copyright is “in a musical composition the authorof which is not a citizen or domicilary of the [U.S.A.] and which was not first published in the [U.S.A.]”. The certi-
ficate is dated May 29, 1967, and discloses the author(s) to be Cyril Arthur Verge (S.E. Cret).
The plaintiff testified that he can neither write nor read a musical score. S.E. Cret performed that task for him.
Although Ex. 1 discloses neither the words nor music composed by the plaintiff, they do appear on a negative photo-
copy produced as Ex. 2, which also bears the date, May 29, 1967. Exhibit 3 consisted of a sealed envelope (Ex. 3(c))
which was opened, as the plaintiff swore, for the first time at trial. It was apparently posted in the U.S.A., originating
from the copyright office of the Library of Congress, and is addressed to the plaintiff in Sackville, Nova Scotia.
Among the contents of Ex. 3(c) is a covering letter (Ex. 3(b)) from the Registrar of Copyrights dated October 31,
1984, referring to the plaintiff’s request for documents of September 10, 1984. The remaining content of Ex. 3(c)
consists of four attached pages the first of which is a cover with the following inscriptions apparently originally ap-
plied by means of a rubber stamp: “May 29, 1967”; “Eu 998619”; and within an oval border, “COPYRIGHT DE-
POSIT, Library of Congress”. The second and third pages are a positive photocopy of Ex. 2, with additionally, a mir-
ror image (as if stamped, heavily inked, on the reverse side of the original paper) of the registration No. Eu 998619.
The fourth page bears merely the apparently rubber-stamped date, May 29, 1967. The Court concludes that the
middle two pages of Ex. 3(a), bearing the words and music of “It’s a Brand New World”, were photocopied from a
documentary deposit which includes the original, signed version of Ex. 1, which, be it noted, bears on its face, in ori-
ginal printing, “Page 3” and on its reverse side “Page 4”. Exhibit 4 is an additional certificate from the U.S. copy-
right office dated April 21, 1967, relating to the plaintiff’s work.
The plaintiff’s work was never published. Some of his friends and acquaintances have heard it performed in
Nova Scotia, both before and after the copyright registration was effected in the U.S.A. The plaintiff had what he
called demonstration recordings, two tape recordings and three 45 r.p.m. disk recordings, made by Associated Re-
cording Studios, Inc. in New York. In cross-examination the plaintiff said that one Joseph Poirier wrote the musical
notes here, and the plaintiff typed the lyrics, Ex. 8, for the vocalist. The vocalist was one Kenny Karen, accompanied
by four instrumental musicians. The recording studio’s work order (Ex. 9) is dated July 18, 1967, and the receipt (Ex.
10) for the vocalist’s remuneration is dated August 10, 1967.
The plaintiff testified that he distributed the demonstration recording to music publishing houses in the U.S.A.
which made extra tapes and disk recordings. The plaintiff made an assignment to only one such publisher, Planetary
Music Publishing Corporation, of the U.S.A., in August 1967. He said it was common to have a song in a publisher’s
office for as long as 20 years before anyone comes along who wants to have it performed or broadcast. Nevertheless,
after initially according the publisher time until only January 5, 1968, in order to secure a commercial recording, the
plaintiff definitively withdrew his work from Planetary on July 8, 1968, being a total period of about 11 months. He
never again made any attempt at commercial exploitation of his song through any other publisher of music.
The plaintiff said he had “hundreds” of writings of lyrics, including “It’s a Brand New World”, already written
which he has never exploited. He has devoted his energies to prosecuting this case, but he acknowledged in his testi-
mony that neither his subject work or anything else of his has been published since 1970. The plaintiff says he was a
member of the American Society of Composers, Authors and Publishers (ASCAP) but not of the Canadian counter-
part (CAPAC) and his last full membership in ASCAP, the plaintiff acknowledged, ended in 1968.
Sometime, early in 1970, the plaintiff heard advertising jingles performed in association with Imperial Oil’s
sponsorship of “Hockey Night in Canada” broadcast over both radio and television. On a magnetic tape, at the begin-
ning of which is recorded the plaintiff’s song, he personally further recorded those jingles. Exhibit 5 is the tape which
was produce for purposes of comparison. It is replicated in another tape, tendered as Ex. 19 during the plaintiff’s
cross-examination. Copies of the defendant’s two advertising jingles, lyrics and musical scores, were produced at trial
by the plaintiff in the form of “Imperial Oil No. 1” (Ex. 6) and “Imperial Oil No. 2” (Ex. 7) under the name of
Mamorsky, Zimmermann & Hamm, Inc., of New York City. Each one is considerably shorter in lyrics than the
plaintiff’s two verses and “tag line”.
By agreement of the parties the respective lyrics were typed, side by side on one sheet of paper, Ex. 29. This
exhibit permits a visual comparison of the respective lyrics, and its second page provides an analysis of the words
and lines about which the plaintiff complains. The analysis discloses this:
Plaintiff’s
work
Total number of words
Times words appear:
“It’s a Brand New World”
“Brand New World”
“Do what you want to do”
“Do what we want to do”
After considering that his copyright was infringed, the plaintiff opened a correspondence with Imperial Oil’s
appropriate officers or employees on June 5, 1970. In his letter (Ex. 12) “written with no prejudices intended” the
plaintiff asserted that the television and radio commercial [singular] “has enough of my copyrigh6ted work in it, to
completely destroy the value of my work”; but nowhere in that letter did the plaintiff identify his work to which he
was then referring! He sought an appointment for a personal conversation. In light of the plaintiff’s coyness about
identifying his work the defendant’s replies (Exs. 13 and 14, dated respectively June 12 and June 19, 1970) are some-
what cautiously expressed, but tractable in meeting the plaintiff’s request for a meeting and hopeful of clearing up
any misunderstanding. Needless to emphasize, litigation was ultimately precipitated by the plaintiff.
During all this time, neither the plaintiff’s lyrics nor those of the defendant were all alone in expressing words
about a brand new world. Exhibit 20 is a photocopy of a song “Brand New World Express”, words by Cecil
Broadhurst, joined for the musical score by Richard M. Hadden, “Copyright, 1953, in U.S.A. and all countries, by
The Oxford Group … London (U.K.)”. Exhibit 21 is a photocopy of a song “Brand New World”, words and music by
Michael Appel, “Copyright 1966 by Peer International Corporation … New York, N.Y. … Printed in U.S.A.”. Exhibit
22 is a photocopy of a song “Brand New World”, by Randy [?] Newman, copyright “1966 January Music Corp. …
New York, N.Y.”. (The emphasized words and years do not bear emphasis in the original texts.) The words of the last
mentioned earlier song (Ex. 22) evoke a particular idea which the plaintiff’s later song evoked in exhorting an un-
named “girl” to enter, and to participate in, the “brand new world”.
The author and composer of the songs featured in the defendant’s commercial advertising, Steven Carl Bend-
eroth, testified at trial. It has been his occupation to write music and lyrics for television commercials since 1969. He
has always resided in New York City. During the years 1969 and 1970, he was operating in a free-lance mode, but
most particularly with the firm of Mamorsky, Zimmerman & Hamm. Upon his submitting his first successful jingle,
the firm offered him what he described as “an exclusive handshake deal”. Although he had no written contract, he re-
garded the firm as being reputable, so he stayed with them. In 1970 Mr. Benderoth was 24 years of age. He testified
that, although he now knows Kenny Karen, a successful jingle singer with whom he worked in New York “last
month”, he did not then know Mr. Karen, and never then saw Karen in any connection with Mamorsky, Zimmermann
& Hamm. Mr. Benderoth had never heard of Cyril A. Verge, or his said song, and had never recorded music at the
Associated Recording Studios, Inc., according to his testimony.
Mr. Benderoth said he has very good, if not perfect, recall of all his songs. The firm wanted a song for its cli-
ent, Imperial Oil. Probably late in 1969 and before mid-March 1970, he began working on it, with a stated theme of
youth and the driving of motor cars. Mr. Benderoth said he was glad that he did not have to write about “high per-
formance” or “fuel injection”. He said that he wrote and composed in New York City, at his parents’ country home in the State of Maryland and — in fact — while driving his motor vehicle between the two locations. Mr. Benderoth
said that as he composed music, he would play or vocalize it into a little tape recorder. The members of the firm, and
he, sang all their own jingles personally. Mr. Jack Zimmerman, “more schooled in music than I”, would arrange the
songs for orchestration.
Mr. Benderoth said in regard to the stated theme of the lyrics for his impugned jingles, that he asked himself,
“What do you do? and considered that “You get away; it’s a whole new world”. “Whole”, he said, is “a dumb word to
sing, so, it’s a brand new world”. He testified that he had no other explanation for those words, but again, they are not
an unusual term of expression. Mr. Benderoth admitted that he had heard the words “do what he want to do” in a
song by a group called “The Mammas and Poppas” [sic] in the 1960s.
Mr. Benderoth was shown Ex. 26 and identified his own signature thereon during his examination in chief.
That document, according to the witness, is the usual form which has been employed in the business and, he said,
there is nothing peculiar about it. It is a letter-form addressed to Mamorsky, Zimmerman & Hamm, Inc. and it pur-
ports to be an assignment to them, “for $1.00 and other valuable considerations” of “all right, title in and to the music
and/or lyrics composed for Imperial Esso of Canada entitled “AWAY, AWAY” [here follows a blank space which
could accommodate one line of text] a copy of which is attached [sic] hereto, including without limitation the exclus-
ive right …”. It was signed only by Mr. Benderoth, without a witness, and is dated March 19, 1970. The title above
mentioned is suggestive of the opening lyrics of Mr. Benderoth’s song (Ex. 27 among others), “Way, away, can you
come away? Will you come today?”
The plaintiff made much of the assignment’s date of March 19, 1970, in his cross-examination of Mr. Bend-
eroth and in the plaintiff’s oral argument. He related that date to the times, related on examination for discovery, by
the defendant’s officer, who mentioned having “a demo sound-track” early in January 1970 (Questions and answers
54 to 58). Mr. Benderoth testified that many times he would write a song or jingle and only later “I would sign at
some point down the line”, having been reminded “don’t forget, Steve, we’ve got to sign this”. The Court, finding as
it does that Mr. Benderoth is a credible witness, finds nothing untoward in his explanation for having signed the as-
signment (Ex. 26) as late as March 19, 1970. Indeed, his testimony stands unshaken in every aspect.
At an early stage of his testimony, the plaintiff said in contradistinction with paras. 12 and 14 of his statement
of claim, that he is not alleging infringement of the musical score of his work; but, in the role of counsel for himself,
he seemed to vacillate on that subject until the defendant’s counsel called Carl Reginald Morey to testify. He holds
the degree of Ph.D. in musicology, among his other academic achievements, and is presently dean of the Faculty of
Music, and chairman of the Graduate Department of Music, University of Toronto. Dr. Morey’s curriculum vitae is
Ex. 30, and his credentials qualify him as an expert witness. The defendant’s counsel proceeded with Dr. Morey in
accordance with R. 482(2)(b); but the plaintiff sought to cross-examine Dr. Morey on the specific terms of the latter’s
opinion expressed in para. 4 of his affidavit, and for that purpose, R. 482(4) notwithstanding, the Court admitted the
affidavit as Ex. 31.
Dr. Morey compared the musical scores of the plaintiff’s and the defendant’s respective songs, and he heard
and listened to them as performed on the tape, Ex. 19. He testified that: the plaintiff’s and the defendant’s works are
not musically similar; the melody or harmony are “not remotely similar”; the musical phrases for the words “it’s a
brand new world” are “distinctly different”; those for the words “do what you want to do” are “quite dissimilar with
nothing in common”; and, as to possible objective similarity between Exs. 2 and 27, it is “not in my ears”. Dr.
Morey’s testimony, unshaken on cross-examination, is conclusive of the issue of infringement of the plaintiff’s copy-
right in his song. The defendant’s music is not a copy and there has therefore been no infringement by means of it.
The words of the defendant’s songs, despite the earlier noted identical phrases, are no more copies of the
plaintiff’s words than they are copies of the lyrics shown in Exs. 20, 21 and 22, above-mentioned. The plaintiff has
utterly failed to demonstrate on a balance of probabilities, and despite those identical phrases, that his lyrics were the source, or the sine qua non of the defendant’s lyrics, or that the latter are either a conscious or unconscious reproduc-
tion or adaptation of the plaintiff’s lyrics. The identical phrases do not replicate a substantial or considerable part of
the plaintiff’s work. Again, Mr. Benderoth testified that he never heard of the plaintiff or his song, or of Mr. Karen, at
the material times and there was no evidence either to prove or to raise the slightest inference that he had. Nor was it
shown at all that Mr. Benderoth had any access to the plaintiff’s lyrics before or when composing his own. The
plaintiff has suffered no infringement of copyright nor any copying of the words of his song “It’s a Brand New
World”.
Support for the foregoing conclusions can be found in the cogent jurisprudence cited for the defendant: Deeks
v. Wells, [1933] 1 D.L.R. 353 (P.C.); Francis Day & Hunter Ltd. v. Bron, [1963] Ch. 587, [1963] 2 All E.R. 16
(C.A.); and Gondos v. Hardy; Gondos v. Toth (1982), 38 O.R. (2d) 555, 64 C.P.R. (2d) 145 (Ont. H.C.).
From the Gondos case, one passage (at pp. 159 and 160 [C.P.R]) of the judgment of Mr. Justice Carruthers
will suffice for present purposes:
… I have drawn a number of legal principles which I adopt and apply in reaching my decision in this case. One,
of great persuasive authority, is a decision of the English Court of Appeal, Francis, Day & Hunter Ltd. et al. v.
Bron (trading as Delmar Publishing Co.) et al., [1963] 2 All E.R. 16. At p. 27, Diplock L.J. states:
First, as to the law; … it is well established that to constitute infringement of copyright in any literary, dra-
matic or musical work there must be present two elements: First, there must be sufficient objective similar-
ity between the infringing work and the copyright work, or a substantial part thereof, for the former to be
properly described, not necessarily as identical with, but as a reproduction or adaptation of the latter;
secondly, the copyright work must be the source from which the infringing work is derived … But, while
the copyright work must be the source from which the infringing work is derived, it need not be the direct
source; … there must be a causal connexion between the copyright work and the infringing work. To borrow
an expression once fashionable in the law of negligence, the copyright work must be shown to be a causa
sine qua non of the infringing work.
Some of the authorities, and particularly the American, in discussing copying, refer to it as being either con-
scious or unconscious. Whether it be found to be one or the other, none of the authorities suggest that there can
be an infringement without a causal connection between the work in which copyright is claimed to subsist and
the alleged infringing work or works. At p. 28 of the Francis, Day case, Diplock L.J. says:
If the existence of the copyright work has no causal connexion with the production of the alleged infringing
work, even though the latter be identical with the former, there is no infringement of copyright.
If there is found to be no causal connection and, therefore, no copying, either conscious or unconscious, then,
any similarities, however strong, which are found to exist between the words must be deemed a coincidence.
So it must be held here. There is no objective similarity in the musical score of the plaintiff’s composition
and the impugned jingles. The appearance of what are essentially only two identical, but rather common, clichés in
the respective lyrics is not shown to be anything other than sheer, and far from unique, coincidences. Accordingly,
the plaintiff’s action must be dismissed with costs.
The defendant’s counsel seeks solicitor-and-client costs to be awarded against the plaintiff. Costs are in the
discretion of the Court. Apart from the protracted and gap-filled time it has taken to bring this case to trial, there is
nothing so extraordinary in this case as to warrant the higher scale of costs. The plaintiff has sued the defendant and
he has lost his suit. That is no great rarity in litigation, even if, with benefit of counsel, the plaintiff might well have
been advised to discontinue his action. The defendant is however quite entitled to have, and will be awarded, judg-
ment against the plaintiff for its full, taxable party-and-party costs.
The parties’ attention is directed to the new R. 346.1, which came into force on April 1, 1987. The plaintiff in
his statement of claim sought judgment in the amount of $100,000. In the event that costs be taxed under the former
Tariff B, they are by this direction, to be taxed throughout according to Class III.
In the result, the plaintiff’s action is dismissed with costs.