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 *Page 91 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 *Page 92 no demand. I find support for these views in Fisher v. StarCo. (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 NewsService 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 *Page 93 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.
LEHMAN, O'BRIEN and CROUCH, JJ., concur with POUND, Ch. J.; CRANE, J., dissents in opinion in which HUBBS, J., concurs; KELLOGG, J., not sitting.
Judgment reversed, etc. (See 259 N.Y. 629.)