Walt Disney Productions v. Air Pirates

• Decision Date: 07 July 1972
• Docket Number: No. C-71 2021.,C-71 2021.
• Parties: WALT DISNEY PRODUCTIONS, Plaintiff, v. The AIR PIRATES et al., Defendants.
• Court: U.S. District Court — Northern District of California

345 F. Supp. 108

WALT DISNEY PRODUCTIONS, Plaintiff, v. The AIR PIRATES et al., Defendants.

No. C-71 2021.

United States District Court, N. D. California.

July 7, 1972.

Frank D. Tatum, Jr., of Cooley, Crowley, Gaither, Godward, Castro & Huddleson, San Francisco, Cal., for plaintiff.

Michael Stepanian, San Francisco, Cal., for defendant Ted Richards.

Albert L. Morse, San Francisco, Cal., for defendant Gary Hallgran.

Michael J. Kennedy, San Francisco, Cal., for defendant Dan O'Neill.

David F. Phillips, San Francisco, Cal., for defendant Bobby London.

OPINION AND ORDER GRANTING PRELIMINARY INJUNCTION

WOLLENBERG, District Judge.

Plaintiff, Walt Disney Productions, a California corporation, brought this action against the four individual defendants who are all residents of the Northern District of California, and two business entities operated by them, alleging, in ten causes of action, infringement of seven copyrights (See Appendix A of this opinion), one trademark, and claims of unfair competition.

The most basic facts are undisputed. The plaintiff does hold valid copyrights on the various works noted in the first seven causes of action. The plaintiff caused each of the specified certificates of copyright registration to be issued to it, pursuant to the provisions of the copyright Act. Plaintiff is at present the copyright proprietor of all copyrightable subject matter in those works, as set forth in the respective certificates of copyright registration. Each of those protected works is a series of cartoon drawings; the series range in length from a single page to "book length". Most of the cartoons depict the antics of a limited number of characters which plaintiff has, over a period of time, created and developed, and most of them include dialogue contained in "balloons" over each of the character's heads, with occasional explanatory material in the margin. The series of cartoons, each of which is known as a "panel", are drawn and arranged to form a narrative.

The plaintiff charges that the defendants have infringed the copyrights in each case by copying the graphic depiction of over seventeen characters, each of which was contained in one or more of the copyrighted works. Interestingly, none of those characters is represented as a human being, but most are members of an animal, or, in two cases, insect, species endowed with what would be considered human qualities. By virtue of the artistry of plaintiff's employees, as well as the conceptual framework of the various copyrighted works, the various drawings of each character have a consistency that gives each character a recognizable image quite apart from the setting of the particular panel. In the case of a number of these characters, of which "MICKEY MOUSE" is probably the prime example, the plaintiff has devoted considerable effort and resources to developing a recognition of that image, and exploiting its value in numerous ways. In that effort, plaintiff has been markedly successful.

Each of the individual defendants has participated in the preparation and publication of two "magazines" of cartoons, each cartoon similarly linked to the others in a series with the purpose of telling a story. Those publications are attached to the complaint as Exhibits A and B. In the defendants' cartoons, each of the characters has a characteristic appearance, as do plaintiff's characters. Several of the graphic depictions of characters drawn by defendants bear a marked similarity to the graphic depictions employed by plaintiff in its various publications. In fact with respect to "MICKEY MOUSE", about whom most of the discussion has revolved, the affidavit of defendant O'Neill states: ". . . I chose to parody exactly the style of drawing and the characters to evoke the response created by Disney."¹ While the character was not copied in the sense that it was photographically reproduced, it was drawn as nearly like the plaintiff's drawing as defendant could make it. The name given the character so "copied" was the same name used in plaintiff's works.

There can, on the other hand, be no question but that the theme and "plot" of the defendants' publications differ markedly from those of plaintiff. While plaintiff claims that it seeks to foster for itself "an image of innocent delightfulness", the defendants assert that they seek to convey a message of significance, although couched in allegorical terms. The depth of the message aside, defendants' image could not fairly be called innocent. A deeper appreciation of the peculiar genius of the works of each of the parties is unnecessary to an understanding of the decision here. In the graphic depiction of a number of the most prominent characters, and in the names given those characters, the respective works are the same. In nearly every other aspect, they are different.

Upon institution of this action, plaintiff sought and was granted a temporary restraining order barring defendants from further distribution of the allegedly infringing material, pending hearing on this motion. By stipulation the restraining order continued in effect through several continuances of the time set for hearing of the motion and then up to the time of entry of this opinion and order. Despite the making of that stipulation, the defendants have made it clear that they would continue the course of conduct of which plaintiff complains in the absence of any contrary order of this Court. This Court does have jurisdiction of plaintiff's cause of action for copyright infringement under the provisions of the Copyright Act of March 4, 1909, as amended.

THE ISSUES

It is elementary that plaintiff must, in order to prevail on its motion for a preliminary injunction against distribution of defendants' publications, demonstrate 1) irreparable injury and 2) likelihood of success on the merits. If the irreparable injury may not be presumed from plaintiff's concededly valid copyrights, and in all probability it may be,² the showing that plaintiff has here made of the probability of damage to the image which it has developed for itself would justify the issuance of an injunction upon a determination that plaintiffs are likely to succeed at trial. The difficult question, then, is that likelihood of success. The defendants argue that the plaintiff's characters, as distinguished from the whole copyrighted work, are not protected by the copyright statutes, that even if they are protected, the use made of them here was a fair use, that even if the use cannot be classified as fair, still the defendants' conduct is protected by the First Amendment guarantees of freedom of speech and press. Further, defendants urge that there has been no trademark infringement or unfair competition.

The Court has determined that sufficient likelihood of success on the claims of copyright infringement has been shown to justify the granting of the preliminary relief sought.

ARE PLAINTIFF'S CHARACTERS PROTECTIBLE?

The threshold issue in this matter is whether the graphic depiction of each of the various characters noted in the first seven causes of action are protected by the copyrights. In each case, at least an entire "strip", consisting of several cartoon panels was the subject of plaintiff's copyright. In several instances, the copyright covered a book. Plaintiffs argue that the provisions of § 3 of the Act extend the protection to the graphic depiction as a "copyrightable component part" of the whole work. Defendants assert that because they have extracted characters from the work, the isolated characters are not protectible.

The authorities cited by plaintiff furnish direct support for its position. King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924) dealt with the imitation of a comic strip character, an unlikely race-horse named Spark Plug, and its reproduction in the form of a toy or doll. The Court upheld a finding of infringement, upon the theory urged here, that the "pictorial illustration", or graphic depiction was a copyrightable component part of the entire work covered by an admittedly valid copyright. Accord, Fleischer Studios v. Ralph A. Freundlich, 73 F.2d 276 (2d Cir. 1934), and Hill v. Whalen & Martell, Inc., 220 F. 359 (S.D.N.Y.1914). In each of those cases, the Court found that the drawings, or graphic depictions, were sufficiently distinctive and defined to be protectible.

Defendants attempt to distinguish the cases cited above upon the ground that each involved an infringer which was trying to imitate the whole style and approach, as it were, of the holder of the copyright. That distinction, however, misses the issue, for protectibility as to a component part depends not at all upon the manner in which the alleged infringer acts, but strictly upon the status of the questioned part within the protected whole, and the characteristics and quality of that part, considered by itself.

Defendants, however, cite many cases in support of the proposition that "characters" as such are not generally copyrightable. They correctly assert that the leading case for that proposition is Warner Brothers Pictures v. Columbia Broadcasting System, 216 F.2d 945 (9th Cir. 1954). That case, like many others in the field, has come to be popularly known for the literary character about whom the dispute revolved, hence, the "Sam Spade Case". The author of a detective story sold rights to the book, The Maltese Falcon, to a motion picture studio. He then assigned rights in the characters, exclusive of their use in the Falcon, to other parties, which parties produced radio dramatizations, including "The Kandy Tooth", centering around the same Sam Spade and many of the other supporting characters, but using different plots. The decision of the Court of Appeals held that there was no infringement of the rights transferred in The Maltese Falcon. Primarily, that holding was premised upon construction of the contract, drawn by the assignee of the rights, with the result...