Lord Wright:-

In 1892 a song entitled “The Man Who Broke the Bank at Monte Carlo” was published in London. It consisted of three verses, with a chorus and was written and composed by Fred Gilbert. Many people remember the original publication. Both words and music were of the most commonplace character, but the music went with a jaunty swing which gave it great vogue and popularity, especially when performed by Charles Coborn. The song consisting of words and music was duly registered at Stationers Hall in London and acquired copyright under the Copyright Act of 1842. But the performing right was not acquired, because of the failure to comply with the conditions imposed by the English Copyright (Musical Compositions) Act, 1882, which required that the proprietor of the copyright if he desired to acquire and retain the right of public representation or performance should print upon the title page of every published copy a notice to the effect that the right of public representation or performance was reserved. In the song the singer recounts how he went to Monte Carlo to raise his winter's rent, but was so successful at the tables that he had lots of money, went to Paris, and swaggered about as a millionaire. The words of the title are repeated at the end of the chorus. Gilbert, the writer and composer died intestate in 1903. Under the then existing law in England the copyright would have expired in 1934, but under the Copyright Act, 1911, the period was changed into one of 50 years from the authors death, that is until 1953. For the residue of this extended period, that is from 1934 to 1953 the copyright vested not in the assignees of the right but in the author or his personal representatives. In the present case these were two daughters. One of these in 1935 transferred one half of her right to the appellant company, whose title so far as it goes is not questioned in these proceedings.

Sometime about 1935 there was exhibited in various theatres in Canada a motion picture entitled “ The Man Who Broke the Bank at Monte Carlo.” The plot of that picture was based on a comedy in three acts by Ilia Surgutchoff and F. A. Swann entitled “The Gamble,” but also at different times called “The Man Who Broke the Bank at Monte Carlo,” “Le Jeu “ and by other titles. The motion picture represented the plot of the comedy, which consisted of the story of an exiled Russian Prince, working as a taxi driver in Paris, who went to Monte Carlo to try his luck with money subscribed by his compatriots in Paris. He had a wonderful run of luck. Then followed an elaborate story of his love affair with a woman. He went back to Monte Carlo, was unsuccessful and lost all his money. He suspected that the object of his affection was guilty of double dealing. He returned to Paris and to his taxi cab. Eventually he and the girl settled their difficulties and all ended happily.

To an unprejudiced observer no two things could appear more dissimilar than this song and this elaborate motion picture, except for the bare fact that each bears the title “The Man Who Broke the Bank at Monte Carlo.” The appellants, however, in 1936 brought an action against the two respondents the former of whom had distributed and rented the film in Canada, while the latter exhibited it in its cinematograph theatres in Canada. The claim in the action was for damages for infringement of the appellants' copyright in the song by performance in public. But without any formal amendment the scope of the action became extended without objection so as eventually to include also a claim for infringement of the literary copyright and for “passing off.” In the Supreme Court of Ontario,

McEvoy J. who tried the action decided against the appellants in respect of the performing right, but decided in their favour and awarded damages for the use of the “title and theme” of the musical work. He said nothing on the issue of “passing off.” In the Appellate Division, the Court of Appeal agreed with McEvoy J.