## Facts

- The musical composition was an old, public-domain song historically known as “Gambler’s Blues.”
- Gotham Music Service, a music publisher, published an arrangement of the song and marketed it under the new title “St. James’ Infirmary.”
- Gotham invested in advertising and promotion that helped make the song commercially successful under the new title.
- Denton & Haskins, a competing publisher, issued sheet music for the same public-domain song under the composite title “St. James’ Infirmary or Gambler’s Blues.”
- Gotham lacked statutory copyright in the underlying song and did not base its claim on registered trademark rights in the title.
- Gotham sued under New York unfair-competition law and obtained an injunction barring Denton & Haskins from using “St. James’ Infirmary” in the title; the Appellate Division affirmed.

## Issues

1. Whether New York unfair-competition law allows a publisher to enjoin a competitor from using a newly popularized title for a public-domain song when the plaintiff has no copyright or trademark.
2. Whether use of the composite title “St. James’ Infirmary or Gambler’s Blues” is actionable because it is likely to mislead purchasers into believing the defendant’s sheet music is the plaintiff’s publication.

## Decision

- The New York Court of Appeals reversed and dissolved the injunction.
- The court held that Gotham failed to show unfair competition because there was no sufficient proof that Denton & Haskins was passing off its publication as Gotham’s or otherwise deceiving purchasers as to source.
- The court permitted Denton & Haskins to continue publishing the song under the composite title.

## Legal Principles

- Unfair competition is grounded in deception, misrepresentation, or “passing off”; competition that merely benefits from another’s publicity is not enough without likely confusion as to source.
- A party cannot obtain exclusive control over a title used to identify a public-domain work, absent a showing that the title functions as a source identifier and the defendant’s use is likely to confuse consumers.
- Advertising expenditures and resulting goodwill, standing alone, do not create a quasi-property right that effectively removes public-domain material from public use.
- In evaluating likely confusion, courts may consider whether purchasers are primarily seeking the underlying work itself (the song) rather than a particular publisher’s edition.

## Conclusion

The court rejected an attempt to use state unfair-competition law to secure de facto exclusivity over a public-domain song’s marketed title, holding that injunctions require proof of source confusion or passing off rather than reliance on promotional effort alone.


Gotham Music Serv., Inc. v. Denton & Haskins Music Publ. Co., 259 N.Y. 86, 181 N.E. 57 (N.Y. 1932)