522 F.2d 737 (2nd Cir. 1975), 246, Epoch Producing Corp. v. Killiam Shows, Inc.

Docket Nº246, 247, 390, Dockets 73-2795, 74-1269, 74-1425.
Citation522 F.2d 737
Party Name187 U.S.P.Q. 270 EPOCH PRODUCING CORPORATION, Plaintiff-Appellee and Cross-Appellant, v. KILLIAM SHOWS, INC., et al., Defendants-Appellants and Cross-Appellees. KILLIAM SHOWS, INC., et al., Third-Party Plaintiffs-Appellants, v. Raymond ROHAUER and Jay Ward Productions, Inc., Third-Party Defendants-Appellees.
Case DateAugust 13, 1975
CourtUnited States Courts of Appeals, Court of Appeals for the Second Circuit

Page 737

522 F.2d 737 (2nd Cir. 1975)

187 U.S.P.Q. 270

EPOCH PRODUCING CORPORATION, Plaintiff-Appellee and Cross-Appellant,


KILLIAM SHOWS, INC., et al., Defendants-Appellants and


KILLIAM SHOWS, INC., et al., Third-Party Plaintiffs-Appellants,


Raymond ROHAUER and Jay Ward Productions, Inc., Third-Party


Nos. 246, 247, 390, Dockets 73-2795, 74-1269, 74-1425.

United States Court of Appeals, Second Circuit

August 13, 1975

Argued May 2, 1975.

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[Copyrighted Material Omitted]

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Jeffrey Squires, Washington, D. C., Peter Jaszi, Chevy Chase, Md. (Goldfarb & Singer, Washington, D. C., Edward A. Sargoy, New York City, of counsel), for defendants-appellants, cross-appellees, and third-party plaintiffs-appellants.

Louis Jobrack, New York City (Isadore B. Hurwitz, New York City, of counsel), for plaintiff-appellee and cross-appellant and third-party appellees.

Gerald Meyer, New York City (Phillips, Nizer, Benjamin, Krim & Ballon, New York City, Melville, Nimmer, Kaplan, Livingston, Goodwin, Berkowitz & Selvin, Beverly Hills, Cal., of counsel), for amicus curiae Columbia Pictures Industries, Inc., and others.

Before MOORE and MANSFIELD, Circuit Judges, and HOLDEN, District Judge. [*]

MANSFIELD, Circuit Judge:

The central issue presented by this appeal is the validity of a renewal copyright in D. W. Griffith's famous film classic The Birth of a Nation ("The Birth"), which was a pioneer in the field of full-length feature motion pictures. The renewal was issued in 1942 by the Copyright Office to Epoch Producing Corporation ("Epoch"), which in 1969 brought suit in the Southern District of New York for infringement against Killiam Shows, Inc., Gregstan Enterprises and Paul Killiam, defendants and third-party plaintiffs (collectively referred to herein as "Killiam"), and against Movielab, Inc. Killiam answered, contending that under the law governing copyright renewal, 17 U.S.C. § 24, 1 Epoch had no legal right to the renewal and that the motion picture passed into the public domain at the expiration of the original 28-year copyright term for lack of a valid renewal application.

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A jury trial before Charles L. Brieant, Jr., Judge, resulted in special verdicts upholding the validity of the renewal and finding that Killiam had infringed it. Killiam appeals from orders assessing damages for infringement and dismissing Killiam's third-party complaint against Raymond Rohauer and Jay Ward Productions, Inc., charging a conspiracy to breach an alleged contractual obligation by Rohauer to refrain from claiming any copyright interest in The Birth and to assist Killiam in improving Killiam's alleged copyright in the motion picture. We hold that since the evidence introduced at trial permitted but one reasonable conclusion, namely, that Epoch had failed to sustain its burden of establishing the validity of its renewal copyright, it was error not to have directed a verdict in favor of Killiam on Epoch's claim. The dismissal of Killiam's third-party complaint for failure to state a cause of action is affirmed.

The numerous issues raised by the parties on this appeal require an understanding of the circumstances surrounding the production of The Birth and negotiations with respect to copyright interests in it. Because of the passage of some 60 years since the picture was made and 32 years since the renewal copyright was issued, the parties have been relegated for the most part to reliance upon contemporaneous documentary proof. Though this evidence leaves substantial gaps, it does establish certain facts. The records of the Copyright Office, corroborated in part by live testimony and by other documentary proof, confirm that in 1914 David W. Griffith produced The Birth. The scenario, written by Griffith and Frank E. Woods, was based upon the novel "The Clansman" written by Thomas Dixon, copyrighted in 1904. Griffith was both the producer and director of the motion picture.

Griffith's role as producer and director of The Birth is evidenced by the first copyright application concerning the film, dated February 6, 1915, which was filed on February 13, 1915, in the name of the David W. Griffith Corporation ("DWG Corp."), a company controlled by Griffith. It applied for a copyright in The Birth as a motion-picture photoplay not reproduced for sale; in other words, as an unpublished work. A Certificate of Copyright Registration, issued to the DWG Corp. on February 13, 1915, states that the film was adapted from Thomas Dixon's novel and produced by D. W. Griffith, with story arrangement by D. W. Griffith and Frank E. Woods. The completed film was first publicly exhibited at Clune's Auditorium in Los Angeles on February 8, 1915, bearing copyright notice in the name of the DWG Corp. 2

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The copyrights for both the published and unpublished works were assigned by the DWG Corp. to Epoch and to Thomas Dixon by two instruments dated April 17, 1915. The assignment of the copyright in the unpublished work, filed with the Copyright Office on May 15, 1915, was signed by David W. Griffith as president of DWG Corp. It assigned "all its right, title and interest" in DWG Corp.'s copyright in the film, which was described as a copyright "for the term of twenty-eight years." The assignment of the copyright in the published work, filed with the Copyright Office on February 25, 1916, was signed by Albert H. T. Banzhaf as treasurer of DWG Corp. It conveyed all of DWG Corp.'s interest in "the copyright acquired by it by public presentation of the motion picture photoplay" with notice of copyright and authorized the assignees to apply for a Certificate of Copyright Registration.

Epoch and Dixon applied for registration of the copyright in the published work on October 1, 1915. A Certificate of Copyright was duly issued in their names, which recites that the film was produced under the direction of David W. Griffith, based on Thomas Dixon's novel, with scenario by D. W. Griffith and Frank E. Woods. The term of this statutory copyright was 28 years from February 8, 1915.

The foregoing evidence of D. W. Griffith's creation of The Birth was corroborated by testimony of two witnesses who were present at the making of The Birth. Lillian Gish and Joseph Henaberry, who played roles in the picture, testified to Griffith's having been in charge of direction and production. Although Dixon was the author of the book upon which The Birth was based, there was no evidence that anyone other than Griffith and Woods wrote the screen photoplay or that anyone other than Griffith produced the motion picture.

On June 22, 1942, Epoch applied to the Copyright Office for a renewal copyright in The Birth, describing itself as both the "author," original claimant, and "the proprietor of copyright in a work made for hire." The term "author" is defined in the Copyright Act to include, "an employer in the case of works made for hire," 17 U.S.C. § 26. D. W. Griffith was listed as the director of the film and, along with Frank E. Woods, as author of the scenario. Thus Griffith was represented to be the employee who made the work for hire and Epoch as the "author," or his employer. A renewal certificate was issued by the Copyright Office in the name of Epoch as "the proprietor in a work made for hire." No other person or entity has ever applied for or received a renewal copyright in the film. 3

In support of its characterization of the film as a "work made for hire," Epoch introduced into evidence at trial several agreements involving the proposed production of a film based on Thomas Dixon's novel. The earliest of these agreements, dated December 20, 1913, which was before The Birth was made or first publicly exhibited, was between Dixon and Majestic Motion Picture Company. It granted to Majestic the "sole and exclusive right" to produce, license and exhibit a motion picture based upon Dixon's novel "The Clansman" and upon a dramatic version of the novel written by Dixon. The film was to be completed by July 1, 1914. Majestic was apparently unable to meet its obligations under this contract as a later agreement was entered into by Majestic and Dixon, dated June 9, 1914, extending the date for completion of the film to October 1, 1914, and changing the financial arrangements

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between the parties. There is no evidence, however, that Majestic participated in the making of The Birth or that it hired Griffith or anyone else to do so.

Epoch was not formed until February 6, 1915, which was after The Birth had been made. Its Certificate of Incorporation was filed in New York State on February 8, 1915, the date of the first public exhibition of The Birth in Los Angeles. Majestic had until this time apparently been unable to fulfill its obligations to Dixon. Epoch assumed those obligations in an agreement dated June 14, 1915. Dixon released Majestic from its obligations, which were increased from $75,000 to $110,000, and accepted Epoch in its place. 4 The two corporations, Majestic and Epoch, appear to have been closely related, since Harry E. Aitken was president of both. Their familiarity to D. W. Griffith is confirmed by Albert H. T. Banzhaf's status as treasurer of both Epoch and DWG Corp. However, there is no evidence of any employer-employee relationship between Majestic or Epoch, on the one hand, and D. W. Griffith, on the other. There is no contract of employment, record of salary payments, or proof that Majestic or Epoch supervised or controlled Griffith in the making of the picture.

The present suit by Epoch for infringement of its renewal copyright has its genesis in the acquisition, by means of a quitclaim deed, by Killiam Shows, Inc., in 1959 of any interest owned by the estate of D. W. Griffith in the right to a statutory renewal copyright in The Birth and in other films. Killiam has distributed The Birth to theatrical...

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