Young, J.:
The plaintiff claims an exclusive right and property in the title “ The Passion Flower ” as applied to a dramatic production. He seeks to restrain the defendants Schenck and Herndon from producing motion pictures of the play under that title and to recover damages.
The defendant Jacinto Benavente, a noted Spanish dramatist, about 1914 wrote a play entitled “ La Malquerida.” Its production upon the stage was highly successful, and upwards of 2,000 performances were given in Spain and Spanish-speaking countries. Benavente copyrighted the Spanish version of this play in the [48]*48United States in March, 1914. In 1916 he granted to plaintiff the sole right to translate and adapt the play into English and to perforin it in that language. Plaintiff translated this and other plays of Benavente’s, and in May, 1917, they were copyrighted and published by Charles Scribner & Sons. The literal translation of “ La Malquerida ” is “ The 111 Beloved.” Plaintiff deemed this title ill adapted to a popular success, and the use of the title “ The Passion Flower ” arose from a free translation by plaintiff of a stanza in the Spanish version in which he made use of this phrase. Throughout the translation it is treated as the equivalent of “ La Malquerida,” although it is not a literal translation of anything in the play. Plaintiff suggested the use of this title to Scribners in the translation, but was dissuaded from so doing. On January 2, 1920, an agreement was made between plaintiff and defendant Herndon, wherein the former (described as “ the proprietor ”) granted to the latter (described as “ the manager ”) the sole right to produce plaintiff’s translation of the play in the United States and Canada, for the term of the copyright and any renewals thereof, and Herndon agreed to pay as royalties therefor five per cent of the first $4,000, seven and one-half per cent of the next $3,000 and ten per cent of the excess above $7,000 of the gross weekly income. This agreement further provided that no rights to the production of the play in motion pictures were conveyed.
Under this agreement the play was first produced in English in New York with Miss Nance O’Neil in the leading role, on January 9, 1920, and was a success. At the time of the trial upwards of 450 performances had been given in the city of New York and elsewhere throughout the United States. It has always been produced under the title “ The Passion Flower,” and is well known under that name.
Thereafter Herndon solicited from plaintiff the world motion picture rights of the play, and in February, 1920, a tentative written agreement was made between them, subject to the consent of the author Benavente, providing for the joint ownership of plaintiff and Herndon of such rights, and for an equal division between them of the profits. On April 1, 1920, plaintiff wrote Benavente for the picture rights. Benavente replied April 26, 1920, that he had already sold them. This sale was to George Gonzalez through a Paris agency on March 20, 1920, for about $800. On June 5, 1920, plaintiff through his attorney returned Herndon’s check for $500 and the tentative agreement was thus abrogated. On the same day Herndon obtained from Gonzalez through his representative in this country, an assignment of Benavente’s contract granting the exclusive world motion picture rights for $2,000.
[49]*49On October 13, 1920, Herndon sold the motion picture rights to the defendant Schenck for $25,000 under a written agreement in which he granted not only such rights in the Spanish play, but also in the English translation made by plaintiff entitled “ The Passion Flower,” and agreed within sixty days to procure from plaintiff his written consent to the use of that title. The agreement also provided that Schenck should use the name of the author in his paid publicity and state upon the film itself for exposure long enough to be read that the motion pictures were based upon a play written by the author and translated by plaintiff.
Herndon thereafter attempted to secure from plaintiff his consent to the use of his translation and the title “ The Passion Flower ” in connection with the motion picture production, but plaintiff refused, and such consent has never been obtained.
In December, 1920, announcement in the press appeared of a motion picture production of “ The Passion Flower ” by Schenck with Miss Norma Talmadge in the title role, and the plaintiff thereupon notified Schenck of his exclusive right and property in the title “ The Passion Flower,” but Schenck nevertheless produced the picture, and plaintiff brought this action.
The trial court rendered a decision in plaintiff’s favor, by which it is found, among other things, that the grant by Benavente to Gonzalez and by Gonzalez to Herndon of the motion picture rights, and the agreement between Herndon and Schenck were void; that the defendants Schenck and Herndon have attempted by unfair means to take away plaintiff’s rights in the play; that the receipts from the spoken drama have been largely reduced by the motion picture production, and the plaintiff’s royalties lessened, and that plaintiff suffers irreparable loss and damage.
The interlocutory judgment entered upon this decision restrains the defendants from announcing, advertising or exhibiting any motion picture reproduction of the play “ La Malquerida ” under the title “ The Passion Flower ” and any motion picture reproduction of said play with lines, titles or captions in the English language; decrees a recovery by plaintiff from defendants Schenck and Herndon of his damages and an accounting by said defendants of profits and appoints a referee to take and state an account of the profits and of plaintiff’s damages.
In considering the questions involved in this case, the right asserted by plaintiff must not be confused with any right of literary property which he might claim as an author either under the copyright statutes or at common law. As to the play, no common-law rights survived its publication and copyright (Palmer v. DeWitt, [50]*5047 N. Y. 532; O’Neill v. General Film Co., 171 App. Div. 854); and, of course, no relief against infringement of the copyright can be had in the State courts. (See Judicial Code [36 U. S. Stat. at Large, 1091, 1092], § 24,.subd. 7; Judicial Code [36 id. 1160,1161], § 256, subd. 5.) As to the title “ The Passion Flower,” standing alone, he is not its author and has no property rights as such, either at common law or under the statute, nor do I think any such rights can be acquired in a mere title. (Outcault v. Lamar, 135 App. Div. 110, 117.)
There are two factors of prime importance upon which the decision of this case must rest. First, that the plaintiff has an interest in the spoken drama and especially in its title “ The Passion Flower,” and second, that Schenck under an alleged grant from Herndon is producing a motion picture of substantially the same play under the same title.
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Young, J.:
The plaintiff claims an exclusive right and property in the title “ The Passion Flower ” as applied to a dramatic production. He seeks to restrain the defendants Schenck and Herndon from producing motion pictures of the play under that title and to recover damages.
The defendant Jacinto Benavente, a noted Spanish dramatist, about 1914 wrote a play entitled “ La Malquerida.” Its production upon the stage was highly successful, and upwards of 2,000 performances were given in Spain and Spanish-speaking countries. Benavente copyrighted the Spanish version of this play in the [48]*48United States in March, 1914. In 1916 he granted to plaintiff the sole right to translate and adapt the play into English and to perforin it in that language. Plaintiff translated this and other plays of Benavente’s, and in May, 1917, they were copyrighted and published by Charles Scribner & Sons. The literal translation of “ La Malquerida ” is “ The 111 Beloved.” Plaintiff deemed this title ill adapted to a popular success, and the use of the title “ The Passion Flower ” arose from a free translation by plaintiff of a stanza in the Spanish version in which he made use of this phrase. Throughout the translation it is treated as the equivalent of “ La Malquerida,” although it is not a literal translation of anything in the play. Plaintiff suggested the use of this title to Scribners in the translation, but was dissuaded from so doing. On January 2, 1920, an agreement was made between plaintiff and defendant Herndon, wherein the former (described as “ the proprietor ”) granted to the latter (described as “ the manager ”) the sole right to produce plaintiff’s translation of the play in the United States and Canada, for the term of the copyright and any renewals thereof, and Herndon agreed to pay as royalties therefor five per cent of the first $4,000, seven and one-half per cent of the next $3,000 and ten per cent of the excess above $7,000 of the gross weekly income. This agreement further provided that no rights to the production of the play in motion pictures were conveyed.
Under this agreement the play was first produced in English in New York with Miss Nance O’Neil in the leading role, on January 9, 1920, and was a success. At the time of the trial upwards of 450 performances had been given in the city of New York and elsewhere throughout the United States. It has always been produced under the title “ The Passion Flower,” and is well known under that name.
Thereafter Herndon solicited from plaintiff the world motion picture rights of the play, and in February, 1920, a tentative written agreement was made between them, subject to the consent of the author Benavente, providing for the joint ownership of plaintiff and Herndon of such rights, and for an equal division between them of the profits. On April 1, 1920, plaintiff wrote Benavente for the picture rights. Benavente replied April 26, 1920, that he had already sold them. This sale was to George Gonzalez through a Paris agency on March 20, 1920, for about $800. On June 5, 1920, plaintiff through his attorney returned Herndon’s check for $500 and the tentative agreement was thus abrogated. On the same day Herndon obtained from Gonzalez through his representative in this country, an assignment of Benavente’s contract granting the exclusive world motion picture rights for $2,000.
[49]*49On October 13, 1920, Herndon sold the motion picture rights to the defendant Schenck for $25,000 under a written agreement in which he granted not only such rights in the Spanish play, but also in the English translation made by plaintiff entitled “ The Passion Flower,” and agreed within sixty days to procure from plaintiff his written consent to the use of that title. The agreement also provided that Schenck should use the name of the author in his paid publicity and state upon the film itself for exposure long enough to be read that the motion pictures were based upon a play written by the author and translated by plaintiff.
Herndon thereafter attempted to secure from plaintiff his consent to the use of his translation and the title “ The Passion Flower ” in connection with the motion picture production, but plaintiff refused, and such consent has never been obtained.
In December, 1920, announcement in the press appeared of a motion picture production of “ The Passion Flower ” by Schenck with Miss Norma Talmadge in the title role, and the plaintiff thereupon notified Schenck of his exclusive right and property in the title “ The Passion Flower,” but Schenck nevertheless produced the picture, and plaintiff brought this action.
The trial court rendered a decision in plaintiff’s favor, by which it is found, among other things, that the grant by Benavente to Gonzalez and by Gonzalez to Herndon of the motion picture rights, and the agreement between Herndon and Schenck were void; that the defendants Schenck and Herndon have attempted by unfair means to take away plaintiff’s rights in the play; that the receipts from the spoken drama have been largely reduced by the motion picture production, and the plaintiff’s royalties lessened, and that plaintiff suffers irreparable loss and damage.
The interlocutory judgment entered upon this decision restrains the defendants from announcing, advertising or exhibiting any motion picture reproduction of the play “ La Malquerida ” under the title “ The Passion Flower ” and any motion picture reproduction of said play with lines, titles or captions in the English language; decrees a recovery by plaintiff from defendants Schenck and Herndon of his damages and an accounting by said defendants of profits and appoints a referee to take and state an account of the profits and of plaintiff’s damages.
In considering the questions involved in this case, the right asserted by plaintiff must not be confused with any right of literary property which he might claim as an author either under the copyright statutes or at common law. As to the play, no common-law rights survived its publication and copyright (Palmer v. DeWitt, [50]*5047 N. Y. 532; O’Neill v. General Film Co., 171 App. Div. 854); and, of course, no relief against infringement of the copyright can be had in the State courts. (See Judicial Code [36 U. S. Stat. at Large, 1091, 1092], § 24,.subd. 7; Judicial Code [36 id. 1160,1161], § 256, subd. 5.) As to the title “ The Passion Flower,” standing alone, he is not its author and has no property rights as such, either at common law or under the statute, nor do I think any such rights can be acquired in a mere title. (Outcault v. Lamar, 135 App. Div. 110, 117.)
There are two factors of prime importance upon which the decision of this case must rest. First, that the plaintiff has an interest in the spoken drama and especially in its title “ The Passion Flower,” and second, that Schenck under an alleged grant from Herndon is producing a motion picture of substantially the same play under the same title. The writing of the play, its production in Spanish, its copyright in Spanish, its translation by plaintiff and the copyright thereof, its production on the stage under agreement with Herndon, the agreement between Herndon and plaintiff as to motion picture rights, the transfer of such rights by Benavente to Gonzalez and by Gonzalez to Herndon, and the agreement between Herndon and Schenck, are all matters of importance as they throw light on the vital question in the case, viz.: Was the making and production of the motion picture of Benavente’s play “ La Malquerida ” under the title “ The Passion Flower ” unfair competition with the production of the spoken drama of the same name in which plaintiff had an interest?
Although not the author or inventor of the title, plaintiff did adopt and use it in connection with the play produced upon the stage as his translation, and any attempt by the defendants to use this title either in a motion picture of the play or in any other manner which competed with or injuriously affected the production of the spoken drama was in my opinion a clear violation of plaintiff’s right and did constitute unfair competition.
The original author Benavente after his grant to the plaintiff of the right to translate and produce the play on the stage could not use the play in motion pictures or grant the right to use it to others in competition with the spoken drama. (Manners v. Morosco, 252 U. S. 317.)
Herndon when he obtained from.Benayente’s assignee an assignment of the world motion picture rights in the play knew, or was legally charged with knowledge, that Benavente was powerless to grant effectively any such rights to be used in competition with the right in the spoken drama already granted to plaintiff. The defendant Schenck was charged with equal knowledge, or at least [51]*51with facts sufficient to put him on inquiry. This is clear, because Herndon assigned and transferred to him “ the motion picture rights ” in the play of which Jacinto Benavente is the author, entitled “ La Malquerida,” as well as in and to the English translation thereof made by John G. Underhill, entitled “ The Passion Flower,” and agreed to procure and deliver to Schenck 'within sixty days Underhill’s written consent to the use of the title “ The Passion Flowrer,” and Schenck agreed to use the name of the author in his paid publicity and to state upon the film for exposure long enough to be read, that the motion pictures were based upon a play written by the author and translated by plaintiff. Herndon never procured or delivered to Schenck, as agreed, plaintiff’s consent to the use of the title " The Passion Flower,” but Schenck nevertheless prepared and produced the film under that title. It is apparent, therefore, that neither Herndon nor Schenck acted in good faith.
Of course, these acts of Herndon and Schenck constituted an infringement of plaintiff’s copyright, but with that infringement we are not concerned. It is not that which fixes the defendant’s liability. The vital thing here is that the motion picture was produced under the same title adopted by plaintiff for the spoken drama. Its production did more than infringe plaintiff’s copyright, it violated his common-law right to the benefits to be derived from the production of the spoken drama free from the unfair competition of a motion picture produced under the same title. Herndon’s transfer to and Schenck’s use of this title with full knowledge of plaintiff’s rights in the matter was at least a constructive fraud and entitles the plaintiff to an injunction and also an accounting for all damages and profits. (Dickey v. Mutual Film Corporation, 186 App. Div. 701.) The mere fact that Herndon has sold the motion picture rights, and took no part in the production by Schenck, constitutes no defense. His acts were an essential part of the illegal transaction which resulted in plaintiff’s injury.
Nor do I think there is any impropriety in allowing plaintiff a recovery from the appellants of both damages and profits. A clear distinction must here be borne in mind between the rights of the parties in the play including motion picture rights, and the sole and exclusive right which the plaintiff had in the title “ The Passion Flower.” Neither damages nor profits can be recovered here solely because of an illegal use of the play, but only because of an illegal use of the title. The result may not be different, but the distinction is clear. No rights which either Herndon or Schenck have acquired in the play or the motion picture rights therein can alter or limit their liability for the invasion of plaintiff’s right in [52]*52the title. The profits to be accounted for under the judgment are not simply those arising from the production of the motion picture. They involve and the judgment provides for an accounting of any profits which either appellant has obtained by reason of “ their unlawful invasion of the rights of the plaintiff.” These would include any profit which Herndon made in selling the motion picture rights to Schenck. The appellants should not be permitted to retain the profits arising from their wrong, and plaintiff, the party wronged, be limited solely to his damages measured by his loss of royalties. It is an elementary policy of the law that the wrongdoer shall not profit by his wrong. Appellants had no greater right to use plaintiff’s exclusive title “ The Passion Flower ” than they would have to invest money in their possession belonging to him. Any profit resulting in either case belongs to plaintiff.
I am unable to see that this case differs from any other case of unfair competition, and it seems to be the general rule that for an mfringement of a trademark or for unfair competition, plaintiff may recover defendants’ profits. (Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169; Dickey v. Metro Pictures Corporation, 164 N. Y. Supp. 788; Cutter v. Gudebrod Brothers Co., 190 N. Y. 252.)
The restraining portion of the judgment, however, is too broad. It restrains not only the motion picture production of the play “ La Malquerida ” under the title “ The Passion Flower,” but “ any motion picture reproduction of said play with lines, titles or captions in the English language.” For the violation of his exclusive right in the title, plaintiff is entitled to an injunction; for a violation of his copyright by the production of the play itself in motion pictures, he can, as I have pointed out, obtain no relief in this court.
The interlocutory judgment should, therefore, be modified by striking out so much of the injunction clause as restrains “ any motion picture reproduction of said play with lines, titles or captions in the English language,” and as so modified affirmed, with costs.
Jaycox and Manning, JJ., concur; Blackmar, P. J., reads for a further modification, with whom Kelby, J., concurs.