300 F. Supp. 1311

(S.D.N.Y. 1969)




EDELSTEIN, DISTRICT JUDGE. This action was brought by Robert Nolan, the composer of a musical composition entitled "Tumbling Tumbleweeds" and tried before the court without a jury. The plaintiff seeks, first of all, a declaration that a July 11, 1934, publishing agreement and a March 1, 1960, assignment were rescinded on May 16, 1963, and the defendants have had no rights in and to the song since that date.


Plaintiff composed "Tumbling Tumbleweeds" in 1929, and, in an agreement dated April 3, 1934, he entered into a publishing agreement with one Harry Walker, doing business as Sunset Publishing Company. However, shortly thereafter, Nolan and Walker by mutual consent rescinded their agreement, and, together with one Harry Hall, joined in an assignment of the song and its copyright to the Sam Fox Publishing Company (Sam. Fox).


The assignment of Sam Fox Publishing Company was dated July 11, 1934, and it provided, inter alia, that the "Composers" (defined as Nolan, Walker and Hall) conveyed to the "Publisher" (defined as Sam Fox Publishing Company), its successors and assigns forever, all the right, title and interest of every kind, nature and description, including the copyright therein, throughout the world, of the Composers in 'Tumbling Tumbleweeds.' " This agreement also recites that it was the intention of the parties


"to transfer to the Publisher all rights of every kind, nature and description (including the rights generally known in the field and musical endeavor as the moral rights of the authors) throughout the world which the Composers have, own and possess in and to the said musical composition and no right of any kind, nature or description is [to be] reserved by the Composers. "


The "Composers" also agreed to renew the copyright on the song and then to assign the renewal term to the "Publisher."


Between 1934 and 1946 Sam. Fox Publishing Company published and exploited Tumbling Tumbleweeds. Subsequently, by an agreement dated January 28, 1946,

Sam Fox assigned all of its right and interest in and to the song to defendant, Williamson Music, Inc., (Williamson) and agreed to use its best efforts to obtain the renewal copyright of the song and then to assign the renewal term to Williamson. Williamson was obligated to reimburse Sam Fox for any bonus or advance that the latter was required to pay in order to obtain the renewal term, provided that Williamson first approved in writing the amount involved.


The instant action followed a letter dated May 29, 1963, which Nolan sent to Fox and Williamson seeking to terminate any and all agreements relating to Tumbling Tumbleweeds between Nolan and Fox.


The basic claim which plaintiff has urged in this suit is that he had the legal right to, and, in fact, did rescind his agreements with Fox by the May 29, 1963, notice. Plaintiff argues that rescission is justified in this case because . . . [of the] assignment of the copyright and its renewal term to Williamson.


The court finds that it was not a breach of contract for Sam Fox to assign the copyright to Williamson. The 1934 transfer from plaintiff to Sam, Fox of "all rights of every kind, nature and description" which plaintiff had in the copyright was clearly absolute on its face. Furthermore, the agreement specifically provided that the conveyance was to the "Publisher, its successors and assigns."


Whether a contract is assignable or not is, of course, a matter of contractual intent, and one must look to the language used by the parties to discern that intent. Clearly the language just quoted contemplated that the agreement was to be assignable. Williston on

Contracts, 5 423 (3rd ed. 1962).


The plaintiff seems to be saying, however, that this contract involved such personal elements of trust and confidence that it was not assignable without the consent of the parties despite the clear language to the contrary.


This argument, though, is not premised upon any reliable evidence adduced at the trial which would demonstrate that Nolan entered into his agreement with Fox because of any personal trust and confidence which he placed in Fox. . . .


Plaintiff's assertions of fraud are based in part upon the allegation that Fox concealed from plaintiff its relationship with Williamson by never giving plaintiff actual notice of the assignment. The evidence, however, does not support a finding of fraud in this regard. It is true that Fox never gave plaintiff actual notice of the assignment, but the court has already held that the contract was assignable without Fox's first having to obtain the plaintiff's consent. Further, far from demonstrating an intent to conceal the assignment, the evidence shows that the defendants openly announced the fact of their arrangement in an advertisement placed in the trade newspaper "Variety" shortly after the assignment was made in 1946.


Additionally, the assignment was registered in the Copyright Office and the Fox-Williamson relationship was noted on the copies of sheet music which were distributed.


It is the judgment of this court that plaintiff's agreements with Fox are not rescinded. Plaintiff is entitled to the payment of royalties due him under his 1934 and 1960 agreements with Fox and the court directs an accounting limited to the period commencing six years prior to the commencement of' this action, except that this six-year limitation does not apply to the money due plaintiff for royalties derived from foreign mechanical income. The counterclaims alleged by the defendants are dismissed.