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10G secondary meanings


About This Page

This page contains the following subsections:

10G.1 — moral rights (go there)
10G.2 — likenesses (go there)
10G.3 — endorsement rights (go there)
10G.3 — free ride (go there)

Where to Look in the Law

Not addressed by the Copyright Act.  Title 15 incorporates the “Lanham Act.”

What the Supreme Court Ruled

 

Dastar Corp. vs Twentieth Century Fox Film Corp. et al.

539 U.S. 23 (6-2-2003)

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“General Dwight D. Eisenhower’s World War II book, Crusade in Europe, was published by Doubleday, which registered the work’s copyright and granted exclusive television rights to an affiliate of respondent Twentieth Century Fox Film Corporation (Fox).  Fox, in turn, arranged for Time, Inc., to produce a Crusade in Europe television series based on the book, and Time assigned its copyright in the series to Fox.  The series was first broadcast in 1949.  In 1975, Doubleday renewed the book’s copyright, but Fox never renewed the copyright on the television series, which expired in 1977, leaving the series in the public domain.  In 1988, Fox reacquired the television rights in the book, including the exclusive right to distribute the Crusade television series on video and to sub-license others to do so.  Respondents SFM Entertainment and New Line Home Video, Inc., acquired from Fox the exclusive rights to manufacture and distribute Crusade on video.  In 1995, petitioner Dastar released a video set, World War II Campaigns in Europe, which it made from tapes of the original version of the Crusade television series and sold as its own product for substantially less than New Line’s video set.  Fox, SFM, and New Line brought this action alleging, inter alia, that Dastar’s sale of Campaigns without proper credit to the Crusade television series constitutes ‘reverse passing off’ in violation of §43(a) of the Lanham Act.  The District Court granted respondents summary judgment.  The Ninth Circuit affirmed in relevant part, holding, among other things, that because Dastar copied substantially the entire Crusade series, labeled the resulting product with a different name, and marketed it without attribution to Fox, Dastar had committed a ‘bodily appropriation’ of Fox’s series, which was sufficient to establish the reverse passing off.”  (quoted from the summary provided by the Supreme Court)

The Supreme Court decided that Dastar had acted properly in reproducing the public domain material while not trading on (and in actually removing) aspects of the original to which others had a continued claim:

“Reading ‘origin’ in §43(a) to require attribution of uncopyrighted materials would pose serious practical problems. Without a copyrighted work as the basepoint, the word ‘origin’ has no discernable limits.  A video of the MGM film Carmen Jones, after its copyright has expired, would presumably require attribution not just to MGM, but to Oscar Hammerstein II (who wrote the musical on which the film was based), to Georges Bizet (who wrote the opera on which the musical was based), and to Prosper Mérimée (who wrote the novel on which the opera was based).  In many cases, figuring out who is in the line of ‘origin’ would be no simple task. Indeed, in the present case it is far from clear that respondents have that status.  Neither SFM nor New Line had anything to do with the production of the Crusade television series—they merely were licensed to distribute the video version.  While Fox might have a claim to being in the line of origin, its involvement with the creation of the television series was limited at best.  Time, Inc., was the principal if not the exclusive creator, albeit under arrangement with Fox. And of course it was neither Fox nor Time, Inc., that shot the film used in the Crusade television series.  Rather, that footage came from the United States Army, Navy, and Coast Guard, the British Ministry of Information and War Office, the National Film Board of Canada, and unidentified ‘Newsreel Pool Cameramen.’  If anyone has a claim to being the original creator of the material used in both the Crusade television series and the Campaigns videotapes, it would be those groups, rather than Fox.  We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries.

“Another practical difficulty of adopting a special definition of ‘origin’ for communicative products is that it places the manufacturers of those products in a difficult position.  On the one hand, they would face Lanham Act liability for failing to credit the creator of a work on which their lawful copies are based; and on the other hand they could face Lanham Act liability for crediting the creator if that should be regarded as implying the creator’s ‘sponsorship or approval’ of the copy, 15 U. S. C. §1125(a)(1)(A). In this case, for example, if Dastar had simply ‘copied [the television series] as Crusade in Europe and sold it as Crusade in Europe,’ without changing the title or packaging (including the original credits to Fox), it is hard to have confidence in respondents’ assurance that they ‘would not be here on a Lanham Act cause of action,’ Tr. of Oral Arg. 35. …

“The creative talent of the sort that lay behind the Campaigns videos is not left without protection.  The original film footage used in the Crusade television series could have been copyrighted, see 17 U. S. C. §102(a)(6), as was copyrighted (as a compilation) the Crusade television series, even though it included material from the public domain, see §103(a).  Had Fox renewed the copyright in the Crusade television series, it would have had an easy claim of copyright infringement.  And respondents’ contention that Campaigns infringes Doubleday’s copyright in General Eisenhower’s book is still a live question on remand.  If, moreover, the producer of a video that substantially copied the Crusade series were, in advertising or promotion, to give purchasers the impression that the video was quite different from that series, then one or more of the respondents might have a cause of action—not for reverse passing off under the ‘confusion … as to the origin’ provision of §43(a)(1)(A), but for misrepresentation under the ‘misrepresents the nature, characteristics [or] qualities’ provision of §43(a)(1)(B).  For merely saying it is the producer of the video, however, no Lanham Act liability attaches to Dastar.

“Because we conclude that Dastar was the ‘origin’ of the products it sold as its own, respondents cannot prevail on their Lanham Act claim.  We thus have no occasion to consider whether the Lanham Act permitted an award of double petitioner’s profits.  The judgment of the Court of Appeals for the Ninth Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion.”


What the Lower Courts Ruled

 

E.E. Paramore, Jr. vs Mack Sennett, Inc.

D.C.Cal. (11-12-1925) ¤ 9 F.2d 66.

E.E. Paramore, Jr., was the author of a poem published and republished in a “well-known illustrated magazine of national circulation” (unnamed in decision) from 1921 to 1923, as well as in another periodical and in a 1923 compilation book.  Titled “The Ballad of Yukon Jake,” its principal character was named Yukon Jake.  Paramore testified that he was preparing a scenario based on the poem and that he had a promising offer when he learned that comedy producer Mack Sennett was preparing to release a slapstick two-reeler called Yukon Jake (1924).  Sennett was warned that he was treading on the copyright of the poem, but released his comedy anyway.  Although there are no incidents from the poem in the film and although a title cannot be copyrighted, Paramore’s poem “satisfied the requirements… necessary to protect his right to the exclusive use of the name ‘Yukon Jake.’”  One reason was that it “has become identified in the public mind by the name given it by the author.”  The Court awarded Paramore $2500 for the destruction of his “property right which would exclude others from the use of it for motion-picture purposes” and for his being “deprived of a market for his scenario.”

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Images such as these demonstrate why E.E. Paramore, Jr. believed that the market for a movie about his rugged character Yukon Jake was sundered by Mack Sennett’s comedy Yukon Jake, starring cross-eyed comic Ben Turpin.
YknJkDscr.gif This descriptive title (called a “subtitle” by filmmakers during the silent-film era but called an “intertitle” by modern curators of film libraries) was the only method by which the film Yukon Jake referred to its title character within the film itself.  Mack Sennett’s company could easily have changed the title prior to release of the film, after Sennett had been warned that the name trampled on Paramore’s copyright.  Creating new title art and changing the relatively little amount of film footage showing the title would have cost Sennett far less expense than the $2500 judgment levied against him.

 

Walt Disney Productions vs Souvaine Selective Pictures

D.C.N.Y. (7-11-1951) ¤ 98 F.Supp. 774, 90 USPQ 138
2nd Cir. (12-6-1951) ¤ 192 F.2d 856 affirmed

When Walt Disney released his feature-length all-cartoon movie of the Lewis Carroll children’s book Alice in Wonderland in 1951, it was after several years of work and millions of dollars in expenditure when that was unusual for film production.  (EDITOR’S NOTE: 1988 and 1995 books written with access to Disney records differ as to whether the cost was $3 million or almost $4 million, whether production took five years or truly began Autumn 1949.  Walt Disney reportedly registered the title with the industry clearinghouse organization in 1938.  Acclaimed author Aldous Huxley delivered a script for a proposed part-live-action version in December 1945.)  French production company Lou Bunin Productions, Inc., had made a version of the book less expensively with puppets, which had its U.S. release scheduled to occur two days prior to Disney’s.  Because theaters tend to put just the title on their marquees, the lower-cost version could be confused for the Disney production.

Disney filed on grounds of unfair competition, contending that his expenses and advertising had given the title “a secondary meaning.”  Nonetheless, the 1865 British book (first U.S. printing: 1869) was in the public domain.  “Anyone has a legal right to make a picture based on Louis [sic] Carroll’s book and entitle it Alice in Wonderland.

“Both sides have been working on their respective pictures for a number of years… .  [P]laintiffs have not acquired any right to exclude others from producing or showing simultaneously and in the same neighborhood a rival portrayal of Alice in Wonderland.”  (All quotes from District Court decision.)


 

Pocket Books, Inc. vs Dell Publishing Co.

Supreme Court, Special Term, New York Co. (1-4-1966) ¤ 267 NYS.2d 269; (3-21-1966) 268 NYS.2d 46

An unauthorized biography of best-selling author Grace Metalious was titled “Girl From ‘Peyton Place’” and had on its cover a picture of Grace Metalious.  Metalious’s publisher sued, objecting that Peyton Place was recognized as the title of Metalious’s multi-million-selling novel, that the title had property value, and that the other publisher was not entitled to put on its covers a picture of Metalious.  The Court ruled that use of the title and picture were allowed.


 

Nancy Sinatra vs Goodyear Tire & Rubber Co., and Young & Rubicam, Inc.

USCA 9th Cir. (11-20-1970) ¤ 435 F.2d 711, 168 USPQ 12

The Young & Rubicam advertising agency conceived for Goodyear Tire the term “wide boots” to be used to describe the tires in advertising.  Six radio and television commercials were centered around music and revised lyrics from the million-selling song “These Boots Are Made For Walkin’” “with the voice of a female singer who was not shown on the screen or identified by name.”  The copyright proprietor of the song, Criterion Music, licensed the song “including any arrangements thereof owned or controlled” by it.  Nancy Sinatra, the singer who had made the song famous and had become associated with it, alleges that her agent was contacted about employing her “but no contract was concluded.”  She alleged in her filing “that the defendants selected a singer whose voice and style was deliberately intended to imitate the voice and style” distinctly hers.  Federal copyright law was not violated, nor was California law insofar as Sinatra alleged unfair competition.  “Appellant is not in the tire business and Goodyear is not selling phonograph records.”

“Here, the defendants had paid a very substantial sum to the copyright proprietor to obtain the license for the use of the song and all of its arrangements.  The plaintiff had not sought or obtained the same rights which would have protected the secondary meaning which she asserts… .  Moreover, the inherent difficulty of protecting or policing a ‘performance’ or the creation of a performer in handling copyrighted material licensed to another imposes problems of supervision that are almost impossible for a court of equity.”  Sinatra lost.


 

Shirley Booth vs Colgate-Palmolive Company and Ted Bates & Co.

USDC S.D.N.Y. (8-6-1973) ¤ 362 F.Supp. 343

Shirley Booth was the actress who starred in the TV sitcom Hazel, where she played the title role for all of the 1961-1966 network run.  The series went with success into syndication.  Colgate first advertised its “Burst” laundry detergent by using a cartoon character who debuted in “Burst” television commercials January 16, 1971.  Booth contended that she was entitled to damages from the advertiser and its advertising agency because the ads used an imitation of her voice (as used in the series).  The Court ruled against her, inasmuch as strong federal policy of permitting imitation prevailed over Booth’s interest in protecting whatever secondary meaning may have attached to her voice as that of the Hazel character.


 

Isabel Manning Hewson Kirkland vs NBC

USDC, E.D. Penn (12-17-1976) ¤ 425 F.Supp. 1111

In 1933, Kirkland originated a story called “Land of the Lost” which became a radio program broadcast from 1943 to 1948.  Children listeners formed “Land of the Lost” clubs, but the last disbanded by January 1954.

NBC started a new children’s television program called Land of the Lost (unrelated but for the title) in September 1974.  Kirkland thought her rights to the title had been infringed.  The Judge ruled that “a copyright in literary material does not secure any right in title itself”.  Any secondary meaning attained by the title had been abandoned by her doing nothing for more than 20 years since the last commercial use by Kirkland.  There was no “likelihood of confusion” between the programs of NBC and Kirkland.  Whatever her previous success, “her extended non-use has resulted in a loss of rights to the title”.


 

Apple Corps Limited vs The Adirondack Group, R/S Distribution, Inc., U.M. Leasing Corp., Mark Buchine, and Rick Smulian

NY S.Crt, Special Term, NY Co. (12-15-1983) ¤ 476 NYS.2d 716, 124 Misc.2d 351

The Beatles’ company sued over unauthorized reproductions of recordings that the four musicians had recorded during their heyday two decades earlier.  When the Beatles originally recorded and made available the contents, the recordings had not been commercially distributed nor copyrighted.  They had not lost their common-law rights, however.

“The Christmas Messages involved were recorded by the Beatles during the years 1963-1969 and were distributed each Christmas, free of charge, to members of the Beatles’ Fan Clubs on flexible discs.  In 1970, the messages were collected and reproduced on a long playing record entitled The Beatles’ Christmas Album and that record was then distributed to members of the Beatles’ Fan Clubs.  The records clearly indicate thereon that all rights with respect to the recording were reserved.”

“The attempt by the defendants to promote these 14 to 20 year old recordings appears to be an act of blatant piracy.  Bennett attempted to avoid a head-on conflict by advising U.M. Leasing Corp. that they should not use the name ‘Beatles’ in connection with their proposed release of the messages, and instead, the album was titled John, Paul, George and Ringo.  This does not insulate the defendants from the charge that they are unfairly trading on the name of the Beatles.  Four persons named ‘John, Paul, George and Ringo’ will not be taken by the public as a reference to the Moskowitz Brothers, to the Pope and two other people, or to anyone else except the members of the best known singing group in the world.  These four names taken together have acquired a secondary meaning, and the Beatles are entitled to protect their name from exploitation.”

(The reference that the four first names in the album titled would not be assumed to refer “to the Pope and two other people” makes the most sense when the reader realizes that the leader of the Catholic Church from 1978 to 2005 was named Pope John Paul.  It’s not believed that this John ever claimed to be more popular that Jesus.)


 

Maljack Productions, Inc. vs GoodTimes Home Video Corp.

USCA, 9th Cir (4-17-1996), affirming 1994 decision.

“Generally, the title of a public domain work cannot be protected by trademark.”  (A thorough summary of this case is under music licensing.  The same film was also the subject of another suit against GoodTimes (under underlying copyright: unpublished work), and also a suit against UAV (under derivative versions).)


Cases Summarized in Other Sections

Bette Midler vs Ford Motor Company and Young & Rubicam (launch this) was similar to the Nancy Sinatra case (above) in that a well-known singer was more not party to television commercials that seemed to imply her endorsement.

 

10G.1 moral rights

Where to Look in the Law

1909 Act: Not discussed
1947 Act: Not discussed
1976 Act: §106A (enacted June 1, 1991)

Copyright Office Publications for Laymen

“December 1, 1990[:] Protection extended to architectural works. Section 106A added to copyright law by Visual Artists Rights Act of 1990. Granted to visual artists certain moral rights of attribution and integrity.”  (Information Circular1a)

What the Courts Ruled

 

George Stevens vs National Broadcasting Company, et al.

Calif. Sup. Crt, LA Co. (2-11-1966) ¤ 148 USPQ 755
Calif. Sup. Crt, LA Co. (6-3-1966) ¤ 150 USPQ 572

George Stevens vs National Broadcasting Company, et al. [including Paramount Television Productions, KSBW-TV, and Paramount Pictures Corp.]

C.A, 2nd Dist. (3-21-1969) ¤ 76 CalRptr. 106

George Stevens had won an Academy Award for Best Direction for APlace in the Sun (1951).  (The film also won for its screenplay, score, cinematography, editing and costumes.)  His legal filing on grounds of “unfair competition” might have seemed miscategorized, yet the courts considered what merits were in his argument that NBC’s broadcast of that particular movie had desecrated it.

“It does appear to … this court that commercial interruptions of television may in the manner of their insertion result in emasculating a motion picture so that the picture will no longer contain substantially the same motion and dynamic and dramatic qualities which it was the purpose of the artist’s employment to produce.”  The defendants were enjoined, but given latitude by the injunction in subsequent broadcasts: “It permits the defendant to insert commercials; however, the commercials must not be inserted so as to alter or adversely affect or emasculate the artistic or pictorial quality of the film, or destroy or distort materially or substantially the mood, effect, or continuity of the film.”  The Judge wrote that “my relief granted here will not be based upon his referring to so-called ‘moral rights’ and other ‘bundles of rights,’” apparently not exercised at the time in the U.S.  (Quoted from the 2-11-1966 decision.)

In the June 3, 1966, decision, it was stated that it was “only the effect of the insertions [of commercials] that may be considered.  The destruction or distortion due solely to the change of medium must be discounted.”  The Court was satisfied that upon broadcast, the injunction was upheld.  It was not a violation that the editing had been “done by defendant’s regular personnel.”  The change of “dissolves to fadeouts, etc.” had not harmed the film (10½ seconds had been lost through those).  “It might be said that the effect of commercial interruptions on a movie is in adverse ratio to the strength or quality of the film.  In this case the film was so dramatic, strong, exciting, romantic, tragic, interesting and artistic that it prevailed over the commercial interruption.”  The placement of the nine interruptions on NBC “were not determined haphazardly, with a stop watch, but with considerable care.”  Unfortunately, it “would probably have been impossible to have used [i.e, arranged for] commercials that were in the same mood as the dominant mood of the picture, which was generally serious, foreboding, and tragic.”  (Quoted from cited decision.)

The 1969 decision stated that in the Appeals Court, the “principal issue is whether the trial court erroneously construed the provisions of an employment contract relating to plaintiff’s ‘cutting’ or ‘editing’ rights” in A Place in the Sun, Shane (1953) and Something to Live For (1952).  “The trial court denied an injunction, [and] awarded plaintiff one dollar by way of nominal damages for a technical violation of the agreement”.  The agreement gave Stevens “the unusual and rare grant of sole control over… subsequent deletions not required for distribution of the picture.”  (In theatrical distribution, a studio might be compelled to unwillingly recut a picture to secure the assent of censorship bodies with the power to block exhibition.)  The trial findings were that: “The particular format used and time period allocated for the television exhibition allowed the motion picture to be shown in its entirety.  The deletions were made with the intent to smooth the transition from the motion picture to the commercials”.  This was the “technical breach”.  The Appeals Court believed that these deletions at the commercial breaks were “required for distribution of the picture.”  The decision says nothing about reversing the award of the one dollar; rather, it affirmed the earlier decision.


 

Otto Preminger and Carlyle Productions vs Columbia Pictures Corporation and Screen Gems, Inc.

Supreme Crt., N.Y. Co. (1-19-1966) ¤ 267 N.Y.S.2d 594, 49 Misc.2d 363, 148 USPQ 398
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Otto Preminger (with Frank Sinatra, top) while making The Man With the Golden Arm.  These frames are from a coming-attractions trailer for the film.

Otto Preminger was already a successful producer-director of movies when he and his company contracted with Columbia Pictures to make and distribute Anatomy of a Murder (1959).  It was uncontested that Preminger had secured “final cut” on the theatrical release.  When the film was to be released to television, the two sides disagreed.

“The interesting question presented for decision is the right of a producer, in the absence of specific contractual provision, to prevent, by injunction, minor cuts in his motion picture when shown on television and the usual breaks for commercials… .”

“Defendant Columbia and defendant Screen Gems, Inc., its subsidiary, … have licensed over 100 television stations to exhibit the motion picture on television, and those license agreements purport to give the licensees the right to cut, to eliminate portions of the picture, and to interrupt the remainder of the picture for commercials and other extraneous matter.

“Unless enjoined, the complaint asserts, defendants will a) detract from the artistic merit of Anatomy of a Murder; b) damage Preminger’s reputation; c) cheapen and tend to destroy Anatomy’s commercial value; d) injure plaintiffs in the conduct of their business; e) falsely represent to the public that the film shown is Preminger’s film.”

After discussing the contracts between Preminger and Columbia (which do allow for television distribution), the decision continues, “Preminger admitted that when he signed the agreement for Anatomy of a Murder, he was aware that the practice of the television industry was to interrupt motion pictures for commercials and to make minor cuts.  Aware of this practice, plaintiffs at the time the instant contract was signed nevertheless did not specifically provide for conditions other than those known to them to be prevalent to the industry.  [EDITOR’S NOTE: Read further for opposing evidence.]

“Two contracts between Preminger and United Artists Corporation were received in evidence.  These were contracts pertaining to Man With [the] Golden Arm [1955] and The Moon Is Blue [1953], the last two pictures produced by Preminger prior to Anatomy of a Murder, which he made for Columbia.  In both the contract for The Moon Is Blue and the contract for Man With a [sic] Golden Arm, clauses appeared which demonstrate that Preminger was aware of the prevailing practice in the television industry with respect to interrupting motion pictures for commercials and making minor cuts therein for normal television purposes.  These contracts further show that when Preminger desired to prevent television distribution in the normal manner, he so provided.

“In the contract between Carlyle corporation and United Artists Corporation, dated December 20, 1954, for Man With The Golden Arm, it was expressly provided that United Artists’ right ‘to make such changes, additions, alternations, cuts, interpolations and eliminations as may be required for the distribution of the picture in television’ should be subject to the approval of Producer.

“In similar fashion the contract with United Artists Corporation with respect to The Moon Is Blue, dated April 28, 1952, provided that United Artists’ right ‘to make such changes, additions, alternations, cuts, interpolations and eliminations as may be required for the distribution of the picture in television’ should be ‘subject to the approval of Producer or its sale representative.

“Both Preminger and United Artists were aware that granting the producer this right of approval was tantamount to giving him a veto power over ultimate television distribution of the film, for in other provisions of both of the above contracts it was expressly recognized that television distribution was not to take place without the producer’s prior approval… .

“Should a viewer resent the fact that the film is interrupted too often for commercials, and assuredly many do, this resentment would be directed at the station or the sponsor of the program.  It is difficult to conceive how such resentment would be directed to the film’s producer or director.

“So standardized has the practice of interrupting films for commercials become, that guidelines have been established in the television industry as to the maximum number of commercials regarded as acceptable in a given time period.”

After giving justification to television distribution, the decision turns to some troubling aspects, including (quoting from an earlier decision which merely granted a temporary injunction before full trial) “authorization to the stationmasters of certain television stations in at least one of the agreements concerned that they ‘may make such cuts or eliminations from each print [of the picture] as we may elect’ provided that such cuts would not reduce the running time of the picture to less than fifty-two minutes”:

“The running time of the full motion picture is 161 minutes.  The brochure for WABC-TV advertised the picture to potential sponsors as a 100-minute feature.  The stationmaster, however, testified, and the Court credits his testimony, that this was a mistake; that it was never intended to permit any such extensive cutting.  This applies as well to the asserted cutting of the picture to 53 minutes.  Obviously such cuts would not be minor and indeed could well be described as mutilation.  Should such ‘mutilation’ occur in the future, plaintiffs may make application to this Court for injunctive or other relief against such violation as they be advised.”

This case proved unusual among copyright decisions (apart from U.S. Supreme Court decisions) in that a dissenting opinion was filed.  Here, Judge Rabin alone dissented, explaining (opinion dated 5-12-1966) that Columbia and Screen Gems sought “the right to authorize unrestricted cuts—not merely ‘minor cuts’—that is put in issue by this lawsuit.  The refusal to grant the injunction sought by the plaintiffs permits any television stationmaster, at will, to cut this picture down to the nebulous point, which the Trial Court calls ‘mutilation’.  It is also because I believe that such cutting is exactly what the contract seeks to guard against, that I dissent.”

Judge Rabin returned to clauses in the Anatomy of a Murder contract previously addressed by the majority decision.  Article VIII gave Preminger’s company “the right to make the final cutting and editing of the Picture, but you shall in good faith consider recommendations and suggestions with respect thereto made by us [Columbia]; nevertheless, you shall have final approval thereof, provided however that notwithstanding the foregoing, in the event that cutting or re-editing is required in order to meet censorship requirements and you shall fail or refuse to comply therewith, then we shall have the right to cut and edit the Picture in order to meet censorship requirements[…]”

Article X gave Columbia the “right during the term herein specified to protect, exhibit, reproduce, transmit and perform, and authorize and license others to project, exhibit, reproduce, transmit and perform, the picture and prints thereof by television, and in any other manner, and by any other means, method or device whatsoever […]”.  Broadly, this was to “include and embrace all so-called ‘theatrical’ as well as ‘non-theatrical’ rights in the Picture (as those terms are commonly understood in the motion picture industry)”.

Judge Rabin asked, “How can it then be said that there is an ‘absence of specific contractual provision’ preventing cuts in the motion picture by anybody but the producer when the picture is shown on television?  To arrive at that conclusion the Court directs us to Article 10 of the contract which it says must be read in juxtaposition with Article 8… . But how does Article 10 lead us to the conclusion reached by the Court ‘that the right to the “final” cutting and editing, reserved to the plaintiffs, is limited to the original or theatrical [release] and not to showings on television’?… It should also be noted that the same Article 10 contains ‘the specific grant’ of theatrical rights without making ‘reference to cutting and editing.’… There is no distinction … in the contract… between the rights granted to the distributor for television and those granted for theatrical”.

This dissenting judge got sarcastic towards his colleagues’ abilities to analyze: “Of course, these two paragraphs must be read together… . To be sure, Article 10 must be read together with Article 8.  Reading them together we must find that the reservation of cutting rights in the producer, found in Article 8, applies to television production [sic: distribution], as well as theatrical—Article 10 making no distinction between the two… . While perhaps proof of custom may be availed of to explain the meaning of the words ‘cutting and re-editing’—although I think those words are plain enough—…”

Returning to the issue of whether the television rights are to be understood as limited to the version prepared for theatrical exhibition, Rabin writes: “Reading the clause in that manner puts it in harmony with the rest of the contract and not at odds with it, as would appear if we would construe it as the defendants would have us do.”

Addressing a different aspect of the complaint, the dissenting judge wrote that “the plaintiffs seek to prohibit the uncontrolled interruption of the exhibition of the picture for commercials.  The producer made no provision in the contract for protection in that respect, as he did in connection with cutting.  Nevertheless, it is conceivable that unlimited interruptions for commercials might tend to permit of a mutilated presentation of the picture to the detriment of the common law rights of the producer.  Perhaps then the plaintiffs are entitled to some relief in that respect.  The Court concluded that commercials have become so ‘standardized … that guidelines have been established in the television industry as to the maximum number of commercials regarded as acceptable in a given time period.’  However, those guidelines are just guidelines and do not give the plaintiffs adequate protection because they may be followed or disregarded by exhibitors at will.”

In an issuance from the Court of Appeals of New York (dated 7-7-1966), seven judges affirmed the majority Supreme Court (New York County) opinion, stating nothing other than “no opinion” as argument.

(EDITOR’S NOTE: In many respects, the case was a matter of a contract dispute.  Cases that are decided on contractual language rather than application of copyright law are generally excluded from this web site.  However, the way in which the case was decided on industry practice makes it suitable as an example of how licensing conflicts are resolved in practice.)


 

Cases Summarized in Other Sections

Shostakovich et al vs Twentieth Century-Fox Film Corporation (launch this) was a suit by several Soviet composers who knew that their work was not under copyright in the United States yet believed that their moral rights were violated by the inclusion of their music in a film which expressed ideas they opposed.

 

10G.2 likenesses

What the Courts Ruled

 

Bloom & Hamlin vs Nixon

C.C.Pa. (11-23-1903) ¤ 125 F. 977.

Hamlin produced a musical based on the popular book The Wizard of Oz.  (The songs used in the ever-popular 1939 movie were written specifically for that film and are in no way the same as for this much-earlier production.)  One song composed and incorporated into the production after the initial performance was “Sammy”.  As performed, it had mimicry of a known singer, and was announced to the audience as an imitation of a number in that singer’s own show.  He sued.  The Court took note that only the chorus sings in The Wizard of Oz number, unlike in the original.


 

Lugosi vs Universal Pictures Co.

Cal.Superior Crt., L.A.Co. (1972) ¤ 172 USPQ 541

Bela George Lugosi vs Universal

Calif. Court of Appeals, 2nd D. (8-11-1977) ¤ 139 Cal.Rptr. 35

Bela George Lugosi, et al vs Universal Pictures

Supreme Court of Calif. (12-3-1979) ¤ 603 F.2d 425
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Three court decisions, each at a higher level than the previous, determined that the widow and son of actor Bela Lugosi (best known for his portrayal of the title role in the 1931 film version of Dracula) did not have rights to his likeness for use in merchandising.  (The second of the three decisions reversed the first, and was affirmed by the third.)  The 1972 decision was that “Bela Lugosi’s interest or right in his likeness and appearance as Count Dracula was a property right of such character and substance that it did not terminate with his death but descended to his heirs.  Plaintiffs have established that they are the beneficiaries of such property by distribution under Bela Lugosi’s will.”

The 1977 decision provides this background: “Respondents Hope Linninger Lugosi and Bela George Lugosi, widow and surviving son, respectively, of Bela Lugosi, filed a complaint against Universal on February 3, 1966 alleging that they were the heirs of Bela Lugosi (Lugosi) who died in 1956, and that Universal had, commencing in 1960, appropriated and continued to appropriate property which they had inherited from Lugosi and which was not embraced in Paragraph 4 of the [studio’s] agreement with Lugosi [wherein the actor in 1930 gave Universal ‘the right to record, reproduce, transmit, exhibit, and exploit … the artist’s name and likeness’ in connection with the film Dracula].  Respondents assert that from 1960 until the present time, Universal entered into many licensing agreements which authorized the licensees to use the Count Dracula character… .

“The trial court concluded that: Lugosi during his lifetime had a protectable property or proprietary right in his facial characteristics and the individual manner of his likeness and appearance as Count Dracula; that said property or proprietary right was of such character and substancce that it did not terminate with Lugosi’s death but descended to his heirs; and that respondents acquired all right, title and interest in and to said property under the will of Lugosi.

“Respondents recovered a judgment for damages and an injunction.  Universal appeals… .

“There is no allegation in the complaint, no evidence in the record, and no finding of the court that Lugosi in his lifetime alone or with others used his name and/or likeness as Dracula or otherwise in connection with any business, product or service so as to impress a secondary meaning on such business, product or service… .

“Lugoi in his lifetime had a right to create in his name and/or likeness ‘… a right of value,’ which could have been transmuted into things of value or Lugosi could, if he elected not to exercise such right, protect it from invasion by othes by a suit for injunction and/or damages.  However, insofar as the record shows, Lugosi had no occasion in his lifetime to sue or restrain anyone because of a purported invasion of his right to commercially exploit his name and likeness.

“Such ‘… a right of value’ to create a business, product or service of value is embraced in the law of privacy and is protectable during one’s lifetime but it does not survive the death of Lugosi… .

“[If] Lugosi, in his lifetime, … had established a business under the name of Lugosi Horror Pictures and sold licenses to have ‘Lugosi as Dracula’ imprinted on shirts, and in so doing built a large public acceptance and/or good will for such business, product or service, there is little doubt that Lugosi would have created during his lifetime a business or a property wholly apart from the rights he had granted Universal to exploit his name and likeness in the characterization of the lead role of Count Dracula in the picture Dracula… .

“It seems to us rather novel to use that because one’s immediate ancestor did not exploit the flood of publicity and/or other evidence of public acceptance he received during his lifetime for commercial purposes, the opportunity to have done so is property which descends to his heirs.  Yet respondents’ claim boils down to this: now that Bela Lugosi is dead, they are the ones who should have the opportunity to exploit their ancestor’s personality.

“If the opportunities of a person to exploit a name or likeness in one’s lifetime is inheritable property, may it be assumed that if the first heirs thereof, like their immediate ancestor, do not exploit similar opportunities the right to do so is automatically transferred to succeeding heirs?

“The law is that upon Lugosi’s death anyone, related or unrelated to Lugosi, with the imagination, the enterprise, the energy and the cash could have in their own name or in a fictitious name, or a trade name coupled with that of Lugosi, have impressed a name so selected with a secondary meaning and realized a profit or loss by so doing depending upon the value of the idea, its acceptance by the public and the management of the enterprise undertaken.

“After Lugosi’s death, his name was in the public domain.  Anyone, including respondents, or either of them, or Universal, could use it for a legitimate commercial purpose.”

Thus: “Assertion by the heirs of the right to exploit their predecessor’s name and likeness to commercial situations he left unexploited simply is not the exercise of that right by the person entitled to it… ..  We hold that the right to exploit name and likeness is personal to the artist and must be exercised, if at all, by him during his lifetime.”

The 1979 case (decided in the California Supreme Court) repeated several points from the 1977 decision: “There is… no finding of the court that Lugosi in his lifetime… used his name and/or likeness as Dracula or otherwise… so as to impress a secondary meaning on such business, product or service.”  And: “Such ‘… a right of value’… is protectable during one’s lifetime but it does not survive the death of Lugosi.”  And: “We hold that the right to exploit name and likeness… must be exercised, if at all, by him during his lifetime.”

To the Lugosis’ chagrin, Universal had been licensing the likeness, having started in 1960 (Lugosi died 1956), receiving more than $260,000 from approximately 35 agreements.  One dissenting judge who nonetheless sided with the majority on this issue, attempted to put into perspective how far removed Lugosi was from being a business enterprise: “Bela Lugosi was a talented actor.  But he was an actor, a practitioner of the thespian arts; he was not a playwright, an innovator, a creator or an entrepreneur.  As an actor he memorized lines and portrayed roles written for him, albeit with consummate skill.  In this instance the part he played was that of Count Dracula, a legendary character out of the novel originated by Bram Stoker, first published in England in 1897, and adapted for the screen by writers employed by Universal Pictures.”

(EDITOR’S NOTE: The difference in the verdicts between these and the Laurel & Hardy likenesses was not lost on the judges.  A judge writing a dissenting opinion in the 1979 Lugosi case mentions the Price v. Roach decision just as the Price v. Roach decision mentions the 1972 Lugosi decision.  In the 1979 Lugosi dissent, it’s stated that in Price v. Roach, it was determined that Laurel & Hardy’s “right of publicity was held to descend to their respective wives upon death”.  (That right had been exercised during the comedians’ lifetimes.)  The Price v. Roach decision, in reasoning why the Laurel & Hardy rights were to be recognized, stated, “The present case is easier to decide than Lugosi [1972] since we deal here with actors portraying themselves and developing their own characters rather than fictional characters which have been given a particular interpretation by an actor.”  The Price court wanted to avoid favoring a policy whereby “‘Sir Laurence Olivier could prohibit anyone else from adopting some innovations which he brought to the performance of Hamlet.’”  (inner quote: Supreme Records v. Decca Records, 90 F.Supp. 904 (S.D.Cal. 1950).)


 

Lucille Hardy Price, Ida K. Laurel and Larry Harmon vs Hal Roach Studios, Inc, Herbert Gelbspan [Executive Vice-President of Roach], Richard Feiner & Co., Inc., Richard Feiner, and Overseas Programming Companies, Ltd.

USDC, SDNY (6-26-1975) ¤ 400 F.Supp. 836, No. 71 Civ. 413
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“This action involves a dispute over the ownership of the commercial rights to use the names and likenesses of Stanley Laurel and Oliver Hardy (‘Laurel and Hardy’), the two famous comedians both now deceased.”  The two women plaintiffs were the widows of the comedians “and are the sole beneficiaries of their estates under their wills… . Defendant Harmon is engaged in the business of producing and distributing films [he had produced Laurel & Hardy cartoons for television; this is not specified in the decision] and of licensing toys and games.  Harmon is party to an agreement dated March 21, 1961 between [his company] and Stanley Laurel [and] plaintiff Price [the remarried widow of the deceased Hardy]… which granted Harmon the right to acquire in perpetuity the exclusive right to utilize and merchandise the names, likenesses, characters and characterizations of Laurel and Hardy.”

Roach held “certain copyrights to Laurel and Hardy motion pictures” and “employment contracts” signed by the comedians when the two had made these films.  Roach relied upon these contracts when “Roach entered into an agreement on May 1, 1969 with defendant Feiner, revised by later agreement dated January 21, 1971, purporting to convey to Feiner the ‘world-wide exclusive merchandising rights’ to the names and likenesses of Laurel and Hardy.  On the same two dates, Feiner, in turn, purported to convey to Overseas those same exclusive merchandising rights outside the United States.”

The “plaintiffs claim that defendants are not legally entitled to the rights which they claim and that their claims are in conflict with the exclusive rights granted to plaintiff Harmon.”  The plaintiffs were declared to have these rights exclusively.  The decision notes that, “Plaintiffs do not dispute defendants’ right to world-wide distribution of copyrighted Laurel and Hardy motion pictures.  In addition, plaintiffs concede that defendants, by virtue of their copyrights, are entitled to use ‘stills,’ or single frames, from the copyrighted movies.  Neither the movies nor the stills, however, are at issue here.”

In giving the likeness rights exclusively to the widows and their assignee, the Court did so although defendants were willing to have concurrent rights: “Defendants argue essentially three theories to support their claim of exclusive or concurrent right to commercial use of the names and likenesses of Laurel and Hardy.  First, they contend that certain employment agreements entered into between Roach and Laurel and Hardy entitle them to exclusive rights.  Second, they maintain that they hold copyrights of certain motion pictures which give right to the claimed rights.  Finally, they assert that they are at least entitled to use the comedians’ names and likenesses along with the general public since they are now in the public domain, either because the plaintiffs never had any exclusive right to their names and likenesses or because they waived any rights which they had.”

Although “the contracts contain a provision granting Roach certain rights to use each actor’s ‘name, voice and likeness for advertising, commercial and/or publicity purposes’”, the Court determined that the “context in which the perpetual grant appears, however, makes it clear that what is granted to Roach in perpetuity relates to the specific photographic reproductions and not to a perpetual and exclusive use in every context of the names and likenesses of Laurel and Hardy.”  The advertising clauses were meant to apply to the movies in perpetuity, but those clauses about rights to the likenesses as such were for the term of any given contract.

The Court rejected the theory that the likenesses had entered the public domain.  “We think it is clear that, during their lifetimes, Laurel and Hardy each had [a publicity right as] a property right, distinct from the statutory protection, in his name and likeness.

“The question which remains open is whether the right of publicity terminates upon the death of the individual or whether it is descendible.”  As property, it is.

“Defendants Roach and Gelbspan also argue that the failure of Laurel and Hardy to ‘use’ their caricatures and imitations between 1940 and 1954 constitutes an ‘abandonment.’  Such an arguement would appear nonsensical.  It cannot be possible for Laurel and Hardy to lose rights in their own names and likenesses through ‘non-use.’…  There cannot, therefore, be any necessity to exercise the right of publicity during one’s life in order to protect it from use by others or to preserve any potential right of one’s heirs.”

Further, “defendant Overseas appears to argue obliquely that Laurel and Hardy by becoming ‘public figures’ waived any rights they might have had.”   However, becoming a “public figure” means (in practice) that “a public figure has no right of privacy”, which is why “Overseas cites us to cases in which public figures or their heirs have unsuccessfully sued publications for invasion of privacy.”  Privacy rights are different from publicity rights, which is what Laurel & Hardy have.

Thus, “Roach did not have the rights which it purported to grant to Feiner who attempted to convey a part thereof to Overseas.”

(Readers might wonder why Laurel & Hardy were entitled to enjoy rights to their likenesses whereas Shirley Booth had lost in Booth v. Colgate-Palmolive [see separate summary].  The Judge answers this.  The Booth case concerned “an ‘imitation’”.  With Laurel & Hardy, it’s “use of a person’s ‘name or likeness.’”  For comparisons to a different losing verdict, see the final paragraph of the summary for Lugosi v. Universal, above.)

Illustrations: Stan Laurel and Oliver Hardy look upon their likenesses.   The two images shown are frames from their film The Flying Deuces (1939), which has entered the public domain for lack of copyright renewal.  Unlike the majority of films starring this comedy team, this film was not produced by Hal Roach Studios and thus was not among the substantial number on which rights were acquired by Richard Feiner.

Subsequent State Law

Since the preceding cases were decided, there have been laws passed in California which strengthen the rights of celebrities after death.  As these are California laws, they apply only in California and in states that have equivalent laws or allow California law to apply under these circumstances.  However, those intending to create new works utilizing images of deceased California-resident celebrities should understand the pertinent laws if these new works are to be made available in California or places which enforce California (or California-equivalent) law.

California has passed acts in 1984, 1999 and 2007.  Currently, the relevant law is Cal.Civ.Code § 990.  In its post-1999 form, this has been called the Astaire Celebrity Image Protection Act.

illustration: likeness of Fred Astaire issued by RKO on advertising materials for its 1938 Astaire movie Carefree.


The law covers “a deceased personality’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent”.  Exceptions are specified so that “a play, book, magazine, newspaper, musical composition, audiovisual work, radio or television program, single and original work of art, work of political or newsworthy value, or an advertisement or commercial announcement for any of these works, shall not be considered a product, article of merchandise, good, or service if it is fictional or nonfictional entertainment, or a dramatic, literary, or musical work.”  Just as federal copyright law makes allowances for news coverage, so too does the California likeness law allow that “a use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required”.

Rights can be transferred by a contract signed during a celebrity’s life or within the celebrity’s will.  In the absence of a will, the law provides a formula which determines the size of the shares to be controlled by the celebrity’s spouse, children and grandchildren.  In all cases, these heirs need to have survived the celebrity to receive a share.  Should there be no surviving spouse, children or grandchildren, the rights go to the celebrity’s parents, if they survived the celebrity.  Should there be no surviving parents, spouse, children and grandchildren, and no will or trust, then there will be no legally-protectable rights to the likeness.

“Any person claiming to be a successor in interest to the rights of a deceased personality under this section or a licensee thereof may register that claim with the Secretary of State on a form prescribed by the Secretary of State and upon payment of a fee”.  Rights last for seventy years from the death, and are transferable within that time.

The law applies to “any such natural person who has died within 70 years prior to January 1, 1985.”


LINKS:

The Secretary of State of California maintains a web page at which users can search the names of deceased celebrities whose successors have filed a statement indicating their financial interest.  This page can be accessed at http://www.sos.ca.gov/business/sf/sf_siisearch.htm.

Readers interested in knowing what the California legislature was attempting to accomplish will find specific rights-owners, incidents and court decisions discussed in two analyses prepared by the state senate when they had had hearings prior to enacting the 2007 modificiation of the Astaire Celebrity Image Protection Act.  These analyses are online here and here.


Court decisions which have influenced new legislation, or which have tested the California law, are:

Astaire v. Best Film & Video Corp. (9th Cir. 6-20-1997), 116 F.3d 1297, 43 U.S.P.Q.2d 1128, 45 U.S.P.Q.2d 1902 (No. 95-56632):
Robyn Astaire, widow of Fred Astaire, sued over a videotape composed of excerpts of her late husband.  The legal rights to the film clips themselves were not at issue; instead, Mrs. Astaire contended that in assembling a new program designed to teach the skills of dance and by using her husband’s image to do so—and by putting her late husband’s image and name on the package—the producer was violating her rights to control his right of publicity.  The Court found nothing specific in the law which had been violated, so it ruled against her.  Although Mr. Astaire’s image was on the package, it served as an advertisement for a new work which could be legally assembled without her consent.  Fred Astaire died in 1987, yet because Mrs. Astaire was forty-five years his junior, she has been and is likely to remain a vigilant force against appropriations of his image.  Changes in California law in 1999 were prompted by the verdict in this case.

Comedy III Productions, Inc. v. Gary Saderup, Inc. (Cal.Supreme Apr 30, 2001), 106 Cal.Rptr.2d 126, 21 P.3d 797, 25 Cal.4th 387, 58 U.S.P.Q.2d 1823 (No. S076061):
Comedy III Productions controls the likeness rights to the Three Stooges, having secured agreements with the heirs of all six performers who were members of the trio.  Legal services during the formation of this company were provided by the same Bela G. Lugosi who had embroiled himself in suing over mechanidising of images of his father (see above).  In this lawsuit, the maker of unauthorized tee shirts showing the Stooges was found to have misappropriated the likenesses.

Diana, Princess of Wales Memorial Fund v. Franklin Mint (Cal.Superior 8-16-2000):
Although the maker of merchandise incorporating the image of Princess Diana had not acquired consent of Diana’s successors, the Court ruled that because Diana was not a resident of California nor of any jurisdiction which applies the relevant California laws, her successors could not sue under California law.  Suit was filed in California owing to the merchandise having been sold there (among other places), but that wasn’t enough.


 

 

10G.3 endorsement rights; free ride

Where to Look in the Law

These issues are not matters addressed in Title 17 (the Copyright Act) but rather in other parts of law.  As such, citations are not provided, although a selection of court decisions are.

What the Courts Ruled

 

Bette Midler vs Ford Motor Company and Young & Rubicam

USCA 9th Cir (6-22-1988) ¤ No. 87-6168

“Ford Motor Company and its advertising agency, Young & Rubicam, Inc., in 1985 advertised the Ford Lincoln Mercury with a series of nineteen 30 or 60 second television commercials… Different popular songs of the seventies were sung on each commercial.  The agency tried to get ‘the original people,’ that is, the singers who had popularized the songs, to sing them.  Failing in that endeavor in ten cases the agency had the songs sung by ‘sound alikes.’  Bette Midler… was done by a sound alike.

“Midler is a nationally known actress and singer.  She won a Grammy as early as 1973 as the Best New Artist of that year.  Records made by her since then have gone Platinum and Gold… .”  Failing to get Midler for the commercial, Young & Rubicam hired Ula Hedwig, a backup singer for Midler for ten years.  The resulting rendition when heard in the commercial sounded so much like Midler that friends and industry people thought that it was Midler’s voice.

“A voice is not copyrightable… . What is put forward as protectible here is more personal than any work of authorship.”

Having established that copyright per se was not at issue, the Court addressed the argument that “the defendants here used an imitation to convey the impression that Midler was singing for them.”  The defendant’s actions indicated that Midler’s identity was a value to them.  “A voice is as distinctive and personal as a face.  The human voice is one of the most palpable ways identity is manifested.  We are all aware that a friend is at once known by a few words on the phone… .

“We need not and do not go so far as to hold that every imitation of a voice to advertise merchandise is actionable.  We hold only that when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs.”


 

The National Basketball Association vs Motorola, Inc.

USCA 2nd Cir. (1-30-1997) ¤ 105 F.3d 841

The National Basketball Association sought to bar Motorola from selling “a handheld pager that displays updated scores and statistics of National Basketball Association games as they are played.”  The Court held “that Motorola and STATS have not unlawfully misappropriated NBA’s property by transmitting ‘real-time’ NBA game scores and statistics taken from television and radio broadcasts of games in progress,” and that Motorola was not guilty of “a misappropriation of ‘hot news’ that is the property of the NBA.”

The NBA had objected that STATS competed with Gamestats, a service offered by the NBA.  The suggestion was that STATS resold the information on Gamestats, but the Court determined that Motorola and STATS “are in no way free-riding on Gamestats.  Motorola and STATS expend their own resources to collect purely factual information generated in NBA games to transmit to SportsTrax pagers. They have their own network and assemble and transmit data themselves.”

With regard to a hypothetical case of what truly would be free-riding, the Court opined: “To be sure, if appellants in the future were to collect facts from an enhanced Gamestats pager to retransmit them to SportsTrax pagers, that would constitute free-riding and might well cause Gamestats to be unprofitable because it had to bear costs to collect facts that SportsTrax did not.  If the appropriation of facts from one pager to another pager service were allowed, transmission of current information on NBA games to pagers or similar devices would be substantially deterred because any potential transmitter would know that the first entrant would quickly encounter a lower cost competitor free-riding on the originator’s transmissions.”


 

 

 

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