Petition for A Writ of Certiorari — Overman v. Loesser

Supreme Court brief1953

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TOPICAL INDEX

Page

Opinions Below

Jurisdiction

Questions Presented 2

Summary and Short Statement of the Matter In-

volved +

Reasons for Granting the Writ. 11

1. Public Importance il

2. The Decision of the Court of Appeals for the

Ninth Circuit is in Conflict with the Decisions

in Other Circuits 17

3. There is Conflict Between the Decisions of the

Trial Court and the Court of Appeals Herein .

and the Decision DuPont v. Masland, 244 U. 8.

100 22

4, There is Conflict Between the Decision of the

Court of Appeals Herein and Other Circuits

as to the Conclusiveness of a Finding of Fact

Under Rule 52(a) Where Such Finding is In-

duced by an Erroneous View of the Law... 23

Conclusion 26

ii Index

TABLE OF CASES AND AUTHORITIES CITED

; Cases

Page

Ackermans v. General Motors, 202 F’. (2d) 642, cer-

tiorari denied, ... U. S. _.. (June 15, 1953)

2-3, 12, 17, 18, 19, 20, 24, 28, 30

7; Life Insurance Co. v. Kepler, 116 F. (2d) 1,

(C. C. A. 8) a4

American Bell Telephone v. Peoples Telephone, 22

F’, 309 , 27

Chesapeake & Ohio R. R. Co. v. Kaltenbach (C. A.

4), 95 F. (2d) 801, 806. 13, 14

Dupont v. Masland, 244 U.S. 100 3, 22

Eckert v. Braun (C. A. 7), 155 F. (2d) 517, 519... 13

Graver Tank & Mfg. Co., Inc., v. Linde Air Prod-

ucts Co., 339 U. 8. 605 16

Hoeltke v. Kemp, 80 F. (2d) 912, certiorari denied,

298 U.S. 673

_-wusdy 12, 13, 14, 15, 17, 18, 19, 20, 21 23, 24, 27, 28, 30

Lorenz v. Colgate Palinolive Peet Co. (C. A. 3), 167

F. (2d) 423, 426. 13

Mumm v. Decker, 301 U.S. 168. 27

Northrop v. Reish (C. A. 7), 200 F. (2d) 924, 928... 13

Picard v. United Aircraft Company (C. A. 2), 128

F. (2d) 632, 637. 12

Saco-Lowell Shops v. Reynolds (C. A. 4), 141 F.

(2d) 587, 597 18

Index

Sandlin v. Johnson (C. A. 8), 152 F. (2d) 8, 11

Schreyer v. Casco Products Corp., 190 F. (2d) 921,

924, certiorari denied, 342 U.S. 913.12, 14, 20, 21

Skelly Oil Co. v. Holloway, 171 F. (2d) 670... . 29

United States v. Armature Rewinding Company, 124

F, (2d) 589 (C. C. A. 8) 25

Wilson v. Seng Co. (C. A. 7), 194 F. (2d) 399, 401... 13

Rule

Federal Rules of Civil Procedure, Rule 52(a)....3, 24, 25

IN THE

SUPREME COURT

OF THE

United States

October Term, 1953

ROBERT E. OVERMAN,

Petitioner,

¥. ee

FRANK LOESSER,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF AP-

PEALS FOR THE NINTH CIRCUIT.

To the Honorable Chief Justice and Associate Justices

of the Supreme Court of the United States:

Your petitioner, Robert E. Overman, prays that a

writ of certiorari issue to review the judgment of the

United States Court of Appeals for the Ninth Circuit

entered in the above-entitled case on June 26, 1953. A

transeript of the record in ti« case, including the pro-

ceedings in said United States Court of Appeals, is

furnished herewith in accordance with the rules of this

Court. :

niin

OPINIONS BELOW

The opinion of the District Court (R. 837, 838)

is unreported. The opinion of the Court of Appeals

(R. 936-943.) is reported in 205 F. (2d) 521.

JURISDICTION

The judgment of the Court of Appeals was entered

on June 26, 1953. A timely petition for rehearing was

filed and denied by the Court of Appeals on August 5,

1953. (R. 945.) Jurisdiction of this Court is invoked

under 28 USC, Sec. 1254 (1).

QUESTIONS PRESENTED

The questions presented are:

1. Where a plaintiff is invited by the defendant to

make a disclosure of an unpatented invention, trade

secret, unpublished composition, or the like, and the de-

fendant thereafter without license from the plaintiff,

proceeds to exploit the same or something highly similar

thereto, and on being sued the defendant defends on

the ground that he is only exploiting his own ideas and

not those imparted to him, must the defendant prove

his defense by evidence that is “‘clear satisfactory and

beyond a reasonable doubt’’ as was held by the Fourth

Circuit Court of Appeals in Hoeltke v. Kemp, 80 F.

(2d) 912, certiorari denied, 298 U. 8. 673, and Acker-

mans v. General Motors, 202 F. (2d) 642, certiorari de-

nied ...... U. S. ..... (June 15, 1953) or need the defen-

dant only prove his defense by a preponderance of evi-

dence which is the holding of the Trial Court herein

standing approved by the Court of Appeals for the

Ninth Circuit?

2. Where there is an implied confidential relation-

ship between the plaintiff and the defendant created

by the defendant inviting the disclosure is “‘the first

thing to be made sure of’’ that “‘the defendant shall

not fraudulently abuse the trust imposed in him. It

is the usual incident of confidential relations.”’ as held

by this Court in Dupont v. Masland, 244 U.S. 100, or is

it sufficient for the defendant to prove by a mere dub-

ious preponderance of oral testimony that he has not

abused the trust?

3. After the defendant has invited and received a

disclosure from the plaintiff of an unpublished musical

composition and thereafter proceeds to commercially

exploit a highly similar musical composition, claiming

to be the prior composer, must the defendant prove that

he was in fact the prior composer by evidence that is

‘‘clear, satisfactory and beyond a reasonable doubt”’ or

need he only produce a group of witnesses who testify

that they heard him play the accused composition at an

earlier date and unless the Trial Judge is able to hold

‘‘all’’ of them incredible, thus defeat plaintiff’s claim ?

4. Isa finding made by a Trial Court conclusive

on appeal under Rule 52(a), Federal Rules of Civil

Procedure, when such finding has been made by the

peas ae

Trial Judge under the iisapprehension that the law

merely requires the defendant to establish his defense

by a mere preponderance of evidence, whereas under

the facts and -ircumstances of the case, the law requires

the defendant to establish his defense by evidence that

is ‘‘clear, satisfactory and beyond a reasonable doubt ?”’

SUMMARY AND SHORT STATEMENT OF THE

MATTER INVOLVED

The condensed statement of fact made in the opin-

ion for the Court of Appeals for the Ninth Circuit is in-

complete and is not in accurate conformity with the

record. The facts of this case in chronological order

are as follows:

Petitioner and plaintiff Overman met defendant

Loesser in February 1946 (R. 42, 43). At that time

Loesser informed Overman that Loesser was about to

organize a music publishing company in New York

City. Loesser was informed that Overman had com-

posed some pieces of music. Loesser invited Overman

to submit some of his compositions for possible publi-

cation inasmuch as

‘tin organizing his publishing company in New

York, just getting started, he (Loesser) couldn’t

afford not to look over any and all music with the

possibility of publishing it.’’ (R. 45.)

1The opinion of the Court of Appeals erroneously states that the meeting

occurred in January 1947.

ieee

In April 1946, Loesser did organize his music pub-

lishing corporation under the name of Susan Publica-

ions, Inc. (Ex. 11.) This corporation ultimately

printed and published the music that is alleged herein

to infringe plaintiff’s copyright.

During the summer of 1946, Overman, while in Los

Angeles, telephoned Loesser and

‘‘asked him if he was serious about me submitting

music to him at that time and he (Loesser) said,

‘Yes, send it on out.’”’ (R. 46.)

During January 1947, T. Goodwin Lyon transmitted

another inquiry from Loesser to Overman concerning

the submission of some of Overman’s compositions (R.

849.) This latter invitation was promptly accepted by

Overman and piano scores and phonographic record-

ings of four of Ov-rman’s musical compositions were

taken by Overman and Lyon to New York City and de-

livered to the office of Loesser’s publisher pursuant to

Loesser’s instructions. (R. 48, 853.) Included in the

package of piano scores and phonographic recordings

was the piano score and phonographic recording of the

song entitled ‘Wonderful You.’ It is the statutory

fringed. The music for this song had been composed

by Overman during the fall of 1946. The lyric was

composed by Mrs. Betty Hawes whose interest in the

song has been assigned to Overman. Just prior to de-

livery of Overman’s music to Loesser’s publishers

sill cies

Overman sent his application to register the song as an

unpublished musical composition to the Register of

Copyrights. (R. 51.)

Loesser retained Overman’s music from January

1947 until May 1947, and acknowledged to one witness

Tiff, some of whose music was also included in the

package, that he had brought the music from New York

to Beverly Hills, California. (R. 879.) In May 1947,

Mrs. Betty Hawes, the composer of the lyric to ‘‘ Won-

derful You’’ was told by Loesser’s secretary in response

to a telephoned inquiry that Loesser had ‘‘Wonderful

You”’ on his desk in Beverly Hills (R. 902). Loesser

returned Overman’s music to him at Kansas City with-

out comment or criticism in May 1947. (R. 66 et sec.)

During the summer of 1947, a lead sheet for the

accused music entitled ‘‘On A Slow Boat to China’’

was prepared for Loesser by Gerald Dolin (R. 541.)

On October 17, 1947, Jerry Phillips prepared a piano

arrangement for Loesser from the lead sheet and had

twenty-four copies prepared by Cameo Music Repro-

ductions. (R. 350, Ex. 26.) In November 1947, licen-

ses were issued to various phonographic record manu-

facturing companies to make records of the accused

music. (Ex. 15-1 to 15-18 inclusive.) On May 7, 1948,

Loesser obtained an unpublished copyright on the ac-

cused music entitled ‘‘On A Slow Boat to China.’’ (Ex.

17 and 18.) On July 20, 1948, Loew’s Inc. was licensed

to use the defendant’s accused music in a moving pic-

ture entitled ‘‘Neptune’s Daughter,’’ (Ex. 15-18.)

During September 1948, the defendant’s music was

sities

published and a published copyright obtained thereon.

The song quickly became a hit tune. On January 2,

1949, Overman heard the accused music on @ radio

broadcast and learned for the first time that the de-

fendant Loesser claimed credit for composing it. (R.

75.) He caused an attorney, Walter K. Olds, to write

a letter to Loesser asserting Overman’s claim, which

letter was received by Loesser but ignored by him. (R.

210.)

The Trial Judge has found for the plaintiff on the

element of access. In fact, access is not seriously dis-

puted by the defendant. As stated by his counsel (R.

168) :

“Our position, quite candidly is we neither

deny nor admit that Mr. Loesser saw the manu-

script or the recording which Mr. Overman claims

to have submitted. Mr. Loesser has no recollec-

tion of having seen them.”

R. 169:

‘Mr. Selvin: Neither deny nor admit. Mr.

Loesser says he has no recollection of ever having

seen it but as he said yesterday it is possible— he

might have seen it.’”

The Trial Judge concluded that the plaintiff ’s

musie and the defendant’s music were ‘*similar’’ (R.

837) after having heard the music played in open court,

8The Court of Appeals opinion erroneously states that there was appellee’s

evidence “to the contrary” on the issue of access.

onic

separately and simultaneously. (R. 264-267.) The

Judges of the Court of Appeals also heard during the

argument of this case before that Court a reproduction

of the music, both separately and simultaneously as it

was played before the trial court. The Court of Appeals

has not seen fit to disturb the Trial Court’s conclusion

that the music of the defendant’s song is similar to

plaintiff’s. The lyrics of the two songs are not involved.

The defense asserted by Loesser is that he com-

posed the accused music ‘‘On a Slow Boat to China’”’

during November 1945, some three months before he

met the plaintiff. He has produced witnesses, each of

whom has testified that at isolated times and places

when no one else was present they individually heard

the defendant play the accused music during 1946.

This was before the plaintiff had composed the music

for ‘‘Wonderful You.’’ Their testimony is neither

susceptible or corroboration nor contradiction. There

is no contention that Overman could in any way have

had aceess to Loesser’s music, if Loesser’s music was

in fact in existence prior to Overman’s composition.

Milton Delugg claims to have written a sketch of

the accused music for Loesser in December 1945. Such

sketch has been scrutinized by handwriting experts on

both sides of this case and its date is incapable of being

established by either one of them. The sketch, however,

contains significant errors which indicates that the

sketch was written long after the music had been pub-

lished.

saillies

After having found for the plaintiff on the elements

of access and similarity the Trial Judge hesitated to

hold “‘all’”’ of defendant’s witnesses incredible and

therefore concluded that on the issue of copying, the

evidence ‘‘preponderates in favor of the defendant.’

His oral opinion rendered at the conclusion of four

days and three nights of steady trial reads mm part as

follows: (R. 838)

‘‘T would also have to hold that each one of the

witnesses produced by the defendant, some of

whom, as I have indicated, taxed my credulity as

I listened to their testimony, I would nevertheless

have to hold that all of them were incredible in

their testimony, and I would have to hold, as a

matter of fact, that the failure of Dolin to ‘ave

copied Exhibit H identically in the summer of

1947, when the testimony shows, without conflict,

that he prepared Exhibit 14 (Dolin), that that

would outweigh all of the direct evidence on the

subject.

‘‘And for that reason I ain constrained, and

must, and do hold that on the third point the evi-

dence preponderates in favor of the defendant,

that there was no actual copying, and must there-

fore give judgment for the defendant.” (Empha-

sis added.)

As copying is a mental act, plaintiff must of neces-

sity rely upon circumstantial evidence. Here the plain-

tiff has proved access and similarity. These factors

alone have been held in numerous cases to be “‘strong

proof one was copied from the other.”’

one TES

Having received a disclosure of the plaintiff’s

music as a result of the defendant’s repeated invita-

tions and solicitations an implied confidential relation-

ship was created between the plaintiff and the defend-

ant. After the plaintiff has established access and

similarity and thus the strong inference that the de-

fendant copied the plaintiff’s music, the defendant

should not be permitted to defeat the plaintiff’s case

by presenting before a credulous judge a group of wit-

nesses and defy the Judge to hold each and every one

of them incredible. In this case, although some of the

defendant’s witnesses taxed the credulity of the judge,

the defiance to hold ‘‘all of them’”’ incredible has caused

the Trial Judge to conclude that ‘‘the evidence prepon-

derates in favor of the defendant’’ on the issue of

copying.

In view of the invited disclosure and the confiden-

tial relationship thus created it should be necessary for

the defendant to establish his defense that he is using

only his own ideas and not those imparted to him by

evidence that is ‘‘clear, satisfactory and beyond a rea-

sonable doubt.’’ This is the only way in which the

Court can make sure that the defendant is not abusing

the trust imposed in him.

The exact nature of the burden of proof imposed

on the parties under these circumstances is the real

question presented by this petition.

will

REASONS FOR GRANTING THE WRIT

1. PUBLIC IMPORTANCE.

Inventors, composers, authors and developers of

trade secrets frequently do not have the financial means

or the ability of commercially exploiting their ideas.

Consequently, they frequently find it necessary to sub-

mit their ideas to some person or concern who has such

means or ability. Progressive concerns invite such

disclosures in the belief that of the many ideas sub-

mitted there may be something of value that can be

commercially exploited to the benefit of all concerned.

There have been numerous instances, however,

wherein the disclosee or recipient of the disclosure

after having received the benefit of the disclosure has

subsequently exploited the same or a highly similar

idea without making just compensation to the dis-

closer: A few of the numerous cases in which this

situation has arisen are cited in the footnote.‘ Invari-

ably in these cases the defense is that the exploiter or

disclosee is not exploiting any of the ideas confiden-

tially submitted to him but is only exploiting his own

ideas which he developed independently.

4Smith v. Dravo Corp., 203 F. (2d) 369;

Northrop v. Reish, 200 F. (2d) 924;

Saco Lowell Shops v. R 141 F. (2d) 587;

Conmor Products Co. v. niversal Slide Fastener Co., 172 F. (2d) 150;

Picard v. United dborele Corp., 128 F. (2d) a:

Chesapeake & Ohio Ry. Co. v. K ‘altenbach, 95 F. (2d) 801;

De Filippis v. rt A oe ee 53 F. Supp. 977, flirmed 159 F. (2d) 478;

Boothe v. Stutz, 56

Matarese v. Moore- ccormech yi 158 F. (2d) 631;

International Industries, Inc. v. Warren Petroleum Corp., 99 F. Supp. 907;

Jones v. Ulrich, 342 TM. App. 16, 25.

—i2—

The rule of law applicable to this situation was first

announced in Hoeltke v. Kemp, 80 F. (2d) 912, as fol-

lows:

— . , . one who admittedly receives a dis-

closure from an inventor, proceeds thereafter to

manufacture articles of similar character, and,

when called to account, makes answer that he was

using his own ideas and not the ideas imparted to

to him”

must prove his defense by evidence that is

‘clear, satisfactory and beyond a reasonable

doubt.”’

This Court denied certiorari in Hoeltke v. Kemp,

298 U. S. 673.

Judge Parker who wrote the majority opinion in

Hoeltke v. Kemp recently quoted this rule with ap-

proval in Ackermans v. General Motors, 202 F. (2d)

642.

Again this Court denied certiorari, ....U. S. —..

(June 15, 1953).

The case of Hoeltke v. Kemp has been cited in

numerous District Court cases and Courts of Appeals

cases in various circuits including

Picard v. Umted Aircraft Company (C. A. 2),

128 F. (2d) 632, 637;

Schreyer v. Casco Products Corp., 190 F. (2d)

921, 924, certiorari denied, 342 U. S. 913;

din

Lorenz v. Colgate Paluolive Peet Co. (C. A. 3),

167 F. (2d) 423, 426;

Chesapeake & Ohio RB. BR. Co. v. Kaltenbach

(C. A. 4), 95 F. (2d) 801, 806;

Saco-Lowell Shops v. Reynolds (C. A. 4), 141

F. (2d) 587, 597;

Wilson v. Seng Co. (C. A. 7), 194 F. (2d) 399,

401; | :

Eckert v. Braun (©. A. 7), 155 F. (2d) 517, 519

(holding that the cases are uniform on the

point) ; :

Northrop v. Reish (C. A. 7), 200 F. (2d) 924,

928 (holding that the Hoeltke case was

‘‘sound’ ) :

Sandlin v. Johnson (C. A. 8), 152 F. (2d) 8, 11.

The opinion in Hoeltke v. Kemp unfortunately is

expressed in two opinions, (1) the original opinion;

and (2), the opinion on rehearing. The opinion on re-

hearing reads in part:

«|, One who invites the disclosure of an

invention and thereafter begins to manufacture

articles embodying the principle of the disclosure,

labors under a heavy burden when he seeks to jus-

tify his action on the ground of independent inven-

tion, and he ought to offer something of greater

weight than the verbal testimeny of interested wit-

nesses. “ ;

This has heretofore been regarded as but another

way of expressing the same rule of law announced in

oe ee

the original opinion, to wit, that the defense must be

established by evidence that is ‘‘clear, satisfactory and

beyond a reasonable doubt.’’ Thus, in Schreyer v. Cas-

co Products Corp., 97 F. Supp. 159, 88 USPQ 515,

523, District Judge Smith quoted only from the origi-

nal opinion as follows:

** . .*(O)ne who admittedly receives a dis-

closure from an inventor, proceeds thereafter to

manufacture articles of similar character, and,

when called to account, makes answer that he was

using his own ideas and not the ideas imparted to

him’ should be required to sustain his defense with

proof which is ‘clear, satisfactory, and beyond a

reasonable doubt’, Hoeltke v. C. M. Kemp Manu-

facturing Co., supra, at 923.”

The judge concluded that this burden of proof had not

been carried by the defendant and found the defendant

guilty of unfair competition. On appeal his decision

on the issue of unfair competition was affirmed,

Schreyer v. Casco Products Corp., 190 F. (2d) 921.

This Couit denied certiorari, 342 U. 8. 913.

In Chesapeake & Ohio R. R. v. Kaltenbach, 95 F.

(2d) 801, (C.C.A. 4), Judge Northcott quoted only

from the opinion on rehearing in the Hoeltke case con-

cerning the nature of the burden of proof imposed on

the defendant and concluded that the defendant had

not carried the burden of proof and that Kaltenbach’s

ideas were ‘‘ wrongfully appropriated.’’

miihon

The decision of the Court of Appeals for the Ninth

Circuit rendered herein has the effect. of unsettling

what was heretofore regarded as an established prin-

ciple of law. The Court of Appeals for the Ninth

Circuit, instead of regarding the statements made in

the rehearing opinion in Hoeltk v. Kemp as being but

a mere rephrasing of the statements made in the origi-

nal opinion said:

‘‘We believe that the broad statement as to

proof ‘beyond a reasonable doubt’ (in the case of

Hoeltke v. Kemp) must be read in connection with

the court’s statement on rehearing and should be

considered modified thereby. We agree with the

modification expressed in the opinion on rehear-

ing . .. ”? (Emphasis added.)

‘To what extent the Court of Appeals for the Ninth

Circuit regards the rule as having been modified is not

clear. Apparently, the Court of Appeals for the Ninth

Circuit is injecting into the law a new burden of proof,

to wit, a ‘‘heavy burden’’. This presumably is some-

thing more than a mere preponderance of evidence but

something less than evidence which is ‘‘clear, satisfac-

tory and beyond a reasonable doubt’’. At all events,

the suggestion that the broad statement as to proof

‘‘heyond a reasonable doubt’’ should be considered

modified throws doubt on the rule heretofore thought

to be settled and established.

Inventors, authors, and composers should be as-

sured by this Court that they may submit their material

roe a

to financiers and publishers anywhere in the United

States and that the courts uniformly throughout the

United States will extend to them the same protection.

That is, if the disclosee appropriates the idea submitted

and defends on the ground that he thought of the idea

first or that he is merely exploiting his own ideas, the

Courts uniformly will require him to prove it beyond

a reasonable doubt. As matters now stand, this is the

rule in the Eastern Circuits. But if it is necessary

for the plaintiff to sue such a defendant in the Ninth

Circuit and after establishing a prima facie case of

plagiarism the Trial Judge hesitates to find all of the

defendant’s witnesses incredible and therefore believes

that the evidence preponderates in the defendant’s

favor the Court of Appeals for the Ninth Circuit will

not come to the plaintiff’s assistance. Consequently,

under identical circumstances the inventor or composer

will be protected in the Eastern part of the United

States but not in the Western part. Equal protection

through the entire nation is necessary. If inventors

and authors are not adequately protected in disclosing

their ideas they will not disclose. Their ideas and com-

positions may die with them and the public may suffer

an irretrievable loss.

The economic desirability of fostering disclosures

has been recognized by this Court. Graver Tank &

Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605,

wherein Mr. Justice Jackson said:

‘*. . . One who seeks to pirate an invention,

like one who seeks to pirate a copyrighted book

on ae

or play, may be expected to introduce minor varia-

tions to conceal and shelter the piracy. Outright

and forthright duplication is a dull and very rare

type of infringement. To prohibit no other would

place the inventor at the mercy of verbalism and

would be subordinating substance to form. It

would deprive him of the benefit of his invention

and would foster concealment rather than dis-

- elosure of inventions, which is one of the primary

purposes of the patent system.’’ (Emphasis

added. )

2. THE DECISION OF THE COURT OF APPEALS FOR THE

NINTH CIRCUIT IS IN CONFLICT WITH THE DECISIONS

IN OTHER CIRCUITS.

Herein the opinion of the Court of Appeals for the

Ninth Circuit is that the ‘‘broad statement as to proof

‘beyond a reasonable doubt’ ’’ in the original opinion

of Hoeltke v. Kemp ‘‘must be read in connection with

the court’s statement on rehearing and should be con-

sidered modified. thereby.”

Judge Parker, who wrote both opinions in Hoeltke

v. Kemp and also the opinion in Ackermans v. General

Motors, did not consider that he had modified the

original opinion by his expressions made in the rehear-

ing opinion. This is because he quoted from both of

the Hoeltke opinions in Ackermans v. General Motors.

If it had been his intention to modify the original

Hoeltke opinion by the opinion on rehearing in the

Hoeltke case, the statements in the original Hoeltke

opinion would have been regarded by him as obsolete

or as inaccurately stating the law. Consequently, he ~

would have quoted only from the rehearing opinion in

the Ackermans case. He did not do so.

We believe that Judge Parker when he wrote the

opinion on rehearing in the Hoeltke case intended to

emphasize the rule announced in the original opinion

rather than to modify it. Hence, the rule stated in

the original opinion and the emphasis stated in the

rehearing opinion are both quoted in the Ackermans

case.

As matters now stand the Court of Appeals for ‘the

Ninth Circuit apparently believes that in a situation

of this kind the burden of proof placed on the defend-

ant is something less than proof ‘“‘beyond a reason-

able doubt,’’ to wit, merely a ‘‘heavy burden.’’ The

District Judge herein ruled merely that the ‘‘evidence

preponderates in favor of the defendant.’’ As the Dis-

trict Court’s decision stands affirmed by the decision

of the Court of Appeals for the Ninth Circuit, the

effect of the ruling is that a mere dubious preponder-

ance of evidence on the part of the defendant satisfies

all requirements. Consequently, a mere preponderance

of evidence is held to meet the requirement of proof

“beyond a reasonable doubt’’ which is the rule that

Hoeltke v. Kemp really stands for.

Obviously a ruling as here by a Trial Judge who

hesitates to hold “‘all’”’ of defendant’s witnesses incred-

ible, and consequently does hold that ‘‘the evidence

—19—

preponderates in favor of the defendant’”’ cannot meet

the requirement that the evidence shall be ‘‘clear, sat-

isfactory, and beyond a reasonable doubt.” It cannot

even meet the requirement ‘‘as modified.”” If a mere

preponderance of evidence as found by the Trial J udge

will suffice, then there is no rule. The rule of Hoeltke

v. Kemp thus becomes emasculated until it amounts to

nothing more than that the defendant shall prove his

defense by a mere dubious preponderance of evidence.

Here this preponderance is derived from a failure on

the part of the plaintiff to prove all of defendant’s

witnesses incredible.

But in the Ackermans case as well as in the Hoeltke

case, the Trial Judges found that the weight of the evi-.

dence preponderated in favor of the defendant. In the

Ackermans ease the Trial Judge so stated in no un-

certain terms. The following is quoted from the Trial

Court’s opinion in the Ackermans case: (108 F. Supp.

368)

‘‘Counsel for plaintiff argues that in the pres-

ent case he has proved that General Motors did

rely upon his disclosure to it in developing its

devicc. However, we believe the contrary to be

true by the weight of credible evidence.”’

The Trial Judge in the Ackermams case also said:

‘To conelude: we do not believe that the fore-

going testimony is sufficient to overcome the testi-

mony to which we have previously referred, name-

ly, that to the effect that even assuming there was

—20—

something confidential about Ackermans’ disclo-

sure to General Motors, nevertheless, the weight of

that testimony seems to be clearly to the effect

that what Ackermans divulged was not, in fact,

relied upon in the development of the General

Motors device.”’

In both the Ackermans and the Hoeltke cases the

failure to require a higher degree of proof was held by

the Court of Appeals for the Fourth Circuit to be re-

versible error. This Court denied certiorari in both

cases.

In the present case the holding by the Trial Judge

that the ‘‘evidence preponderates in favor of the de-

fendant’’ is held not to be reversible error. The Courts

of Appeals in the Fourth and Ninth Circuits are there-

fore in irreconcilable conflict.

For further conflict consider the case of Schreyer

v. Casco Products Corp., 97 F. Supplement 159. There,

the Trial Judge required of the defendant evidence be-

yond a reasonable doubt, quoting from the Hoeltke case

as follows: :

‘* . . . ‘(O)ne who admittedly receives a

disclosure from an inventor, proceeds thereafter to

manufacture articles of similar character, and,

when called to account, makes answer that he was

using his own ideas and not the ideas imparted

to him’ should be required to sustain his defense

with proof which is ‘clear, satisfactory, and be-

yond a reasonable doubt’, Hoeltke v. C. M. Kemp

Manufacturing Co., supra, at 923.”’

iii

The rehearing opinion in the liveltke case was not even

mentioned in the opinion of the Trial Judge.

If the ‘beyond a reasonable doubt”’ rule was ‘‘modi-

fied’’ as held by the Court of Appeals for the Ninth

Circuit herein, then the Court of Appeals for the Sec-

ond Circuit should have reversed the Trial Judge in

Schreyer v. Casco Products Corp., holding that the

burden of proof imposed by the Trial Court, to wit,

‘beyond a reasonable doubt’’ was too severe. The

Court of Appeals for the Second Cireuit did not re-

verse; it affirmed (190 Fed. (2nd) 921). This Court

denied certiorari 342 U.S. 913.

Consequently, as the burden of proof imposed on the

defendant here is something less than ‘‘beyond a rea-

sonable doubt’’ the decision of the Court of Appeals

for the Ninth Circuit herein is in irreconcilable conflict

with Schreyer v. Casco Products Corp.

These conflicts should be resolved by this Court.

The law should not have one rule in one part of the

United States and another rule in the Ninth Circuit.

Inventors and composers should be assured that they

may submit their ideas to persons having the means

and the ability to exploit them anywhere in the United

States, and the Courts will protect their confidential

disclosures against theft by the disclosees by requiring

the disclosees to prove their defense of prior conecep-

tion by evidence that is ‘‘clear, satisfactory and beyond

a reasonable doubt.”’

—22—

8. THERE IS CONFLICT BETWEEN THE DECISIONS OF

THE TRIAL COURT AND THE COURT OF APPEALS

HEREIN AND THE DECISION DUPONT v. MASLAND,

244 U. 8. 100.

Herein, the Trial Court ignored the fact that access

by the defendant to the plaintiff’s music was brought

about by the defendant’s own repeated solicitations.

These created an implied confidential relationship and

should have been the starting point for consideration

rather than be ignored. As said by Mr. Justice Holmes

in Dupont v. Masland,, 244 U.S. 100:

‘Therefore the starting point for the present mat-

ter is not property or due process of law, but that

the defendant stood in confidential relations with

the plaintiffs, or one of them.’’

Had the Trial Court considered this factor as a

starting point it would have been forced to arrive at

the same conclusion expressed in Dupont v. Maslamd,

namely that

“*-. . . the first thing to be made sure of is that

the defendant shall not fraudulently abuse the

trust reposed in him.”’

This is stated in the opinion to be the usual incident of

confidential relations.

The only way any court can make swre that an in-

trusted defendant is not abusing his trust is to impose

on him the requirement that he prove he is not abus-

ing the trust by evidence ‘‘beyond a reasonable doubt.”’

—23—

The Court of Appeals herein by failing to require this

highest degree of proof has not undertaken to make

‘‘sure’’ that the defendant has not fraudulently abused

the trust reposed in him and therefore the Court of

Appeals herein has not been acting harmoniously with

this important decision of this Court.

4. THERE IS CONFLICT BETWEEN THE DECISION OF THE

COURT OF APPEALS HEREIN AND OTHER CIRCUITS

AS TO THE CONCLUSIVENESS OF A FINDING OF FACT

UNDER RULE 52(a) WHERE SUCH FINDING IS IN-

DUCED BY AN ERRONEOUS VIEW OF THE LAW.

Here, the Trial Court has found that despite access

and similarity that there has been no copying by the

defendant. This finding was induced by the erroneous

view of the law that all that was necessary was for the

Trial Court to determine in whose favor the evidence

preponderated. Even this was determined by decid-

ing whether or not it was necessary for the Trial Judge

to hold “‘all’”’ of the defendant’s witnesses incredible.

This is not the law.

The Court of Appeals herein has recognized that it

is not the law, but says that the law requiring proof

‘beyond a reasonable doubt” was ‘‘modified’’ by the

statement on rehearing in Hoeltke v. Kemp.

However, instead of reversing the Lower Court for

failure to require that the defendant carry the proper

burden of proof the Court of Appeals, in effect, accepts

the finding on a lesser showing, saying:

—24—

“Since the finding involved the credibility of

witnesses, and since it was supported by substan-

tial evidence, it is conclusive upon appeal. Rule

52(a).”’

Neither the Trial Court nor the Court of Appeals here-

in has required the defendant to prove his defense by

evidence ‘‘ beyond a reasonable doubt,’’ or even to carry

a “‘heavy burden.”’

A finding of fact induced by an erroneous view of

the law is not conelusive on appeal. It is clearly erro-

neous. It should have no legitimate standing what-

soever on appeal. Such findings were not conclusive

on appeal in either Hoeltke v. Kemp or Ackermans v.

General Motors. To that extent the decision here is in

conflict with the decisions of the Fourth Circuit as to

the conclusiveness of a finding on appeal under Rule

52(a) where the Trial Court has been under the mis-

apprehension that the circumstances of the case re-

quire merely proof by the defendant that preponder-

ates in his favor but which is less than proof ‘‘beyond

a reasonable doubt.’’

With respect to the conclusiveness of a finding un-

der Rule 52(a) which has been induced by an errone-

ous view of the law, the Ninth Circuit is out of har-

mony with and in conflict with other circuits. See

Aetna Life Insurance Co. v. Kepler, 116 F. (2d) 1,

(C. C. A. 8):

**Findings of fact of the court below to the

extent that they are unsupported by substantial

ssi cise

- evidence or are clearly against the weight of the

evidence or were induced by an erroneous view of

the law are not binding upon this court.” (Em-

phasis added.)