Rohauer v. Killiam Shows, Inc.

• Decision Date: 31 May 1977
• Docket Number: D,No. 129,129
• Citation: 551 F.2d 484
• Parties: Raymond ROHAUER and Cecil W. Hull, Plaintiffs-Appellees, v. KILLIAM SHOWS, INC., et al., Defendants, Killiam Shows, Inc., and Educational Broadcasting Corporation, Defendants- Appellants. ocket 76-7177.
• Court: U.S. Court of Appeals — Second Circuit

Page 484

551 F.2d 484

192 U.S.P.Q. 545

Raymond ROHAUER and Cecil W. Hull, Plaintiffs-Appellees, v. KILLIAM SHOWS, INC., et al., Defendants Killiam Shows, Inc., and Educational Broadcasting Corporation, Defendants- Appellants.

No. 129, Docket 76-7177.

United States Court of Appeals Second Circuit.

Argued Nov. 18, 1976.

Decided Jan. 7, 1977.

Certiorari Denied May 31, 1977.

See 97 S.Ct. 2666.

Peter A. Jaszi, and Jeffrey L. Squires, Washington, D.C. (Abraham Fuss, and Laitman, Mathews & Magidson, New York City, of counsel), for defendants-appellants.

Herbert P. Jacoby, New York City (Burns & Jacoby, New York City, of counsel), for plaintiffs-appellees.

Phillips, Nizer, Benjamin, Krim & Ballon, New York City (Gerald Meyer, Alan A. Benjamin, and Thomas G. Jackson, New York City, of counsel), for United Artists Corp., amicus curiae.

Irwin Karp, New York City, for The Authors League of America, Inc., amicus curiae.

Before WATERMAN, FRIENDLY and MULLIGAN, Circuit Judges.

FRIENDLY, Circuit Judge:

This well briefed and argued appeal raises a question of copyright law of first impression. ¹ The question is of considerable importance despite the small amount of money here at stake. The issue is this: When the author of a copyrighted story has assigned the motion picture rights and consented to the assignee's securing a copyright on motion picture versions, with the terms of the assignment demonstrating an intention that the rights of the purchaser shall extend through a renewal of the copyright on the story, does a purchaser which has made a film and obtained a derivative copyright and renewal copyright thereon infringe the copyright on the story if it authorizes the performance of the copyrighted film after the author has died and the copyright on the story has been renewed by a statutory successor under 17 U.S.C. § 24, who has made a new assignment of motion picture and television rights? As has been so often true in cases arising under the Copyright Act of 1909, neither an affirmative nor a negative answer is completely satisfactory. A court must grope to ascertain what would have been the thought of the 1909 Congress on an issue about which it almost certainly never thought at all. See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 45 L.Ed.2d 84 (1975). In returning an affirmative answer to the question posed, Judge Bauman recognized that the negative would not be illogical, see 379 F.Supp. at 727. While we recognize that an affirmative answer likewise is by no means illogical, we believe a negative answer is more in keeping with the letter and purposes of the statute as best we can discern them.

There is no dispute about the facts. Sometime before May 15, 1925, Edith Maude Hull (Mrs. Hull), a British subject, wrote a novel entitled "The Sons of the Sheik." The novel was published in the United States about that time by Small, Maynard & Co., Inc., which obtained a United States copyright, assigned by it to Mrs. Hull in November 1925. By an instrument dated December 7, 1925, Mrs. Hull, as Seller, for a consideration of $21,000, granted, sold and assigned to Joseph H. Moskowitz, as Purchaser, all the motion picture rights to the story for the entire world, "together with the sole and exclusive right to make motion picture versions thereof," to secure copyright on the films, and to "vend, exhibit, exploit and otherwise dispose of the same." The Seller agreed "to renew or procure the renewal of the copyrights" in the story prior to their expiration and thereupon to assign to the Purchaser the motion picture rights for the renewal term. ²

Pursuant to this agreement, a highly successful silent motion picture entitled "The Son of the Sheik," starring Rudolph Valentino, was produced and released for exhibition in the United States in 1926. On August 24, 1926, the picture was registered in the Copyright Office by and in the name of Feature Productions, Inc., an assignee of Moskowitz. This copyright was renewed on March 18, 1954, in the name of Artcinema Associates, Inc., the then proprietor of the copyright; the renewal copyright was sold in 1961 to Gregstan Enterprises, Inc., a corporation headed by Paul Killiam, and was assigned by Gregstan to the defendant Killiam Shows, Inc. (hereafter Killiam) in 1968.

Mrs. Hull died in 1943. On May 22, 1952, the United States copyright in the novel was renewed in the name of her daughter, Cecil Winstanley Hull (Miss Hull), a party plaintiff herein, the author's sole surviving child. On May 6, 1965, Miss Hull assigned to plaintiff Rohauer all of her "right, title and interest (if any) in and to the motion picture and television rights of every kind and character throughout the world and in all languages" to "Sons of the Sheik." Rohauer paid 446 pounds 10 shillings (then the equivalent of $1250) for this assignment.

On July 13, 1971, the motion picture was shown on television station WNET, owned by defendant Educational Broadcasting Corporation (hereafter Broadcasting) and operating on Channel 13 in the New York metropolitan area. The videotape required for this exhibition was made by Broadcasting from a print of the film made available to it by Killiam. No license had been obtained from plaintiffs Rohauer or Miss Hull, although Rohauer's attorney had informed an officer of Killiam in 1966 of his assignment from Miss Hull and had advised that any showing of the picture would constitute an infringement. Similar notice was given by Rohauer's counsel to Broadcasting the day before the first television showing. After this action was commenced the film was shown twice more on Channel 13.

The plaintiffs claimed and the District Court held, 379 F.Supp. 723 (S.D.N.Y.1974), that upon the expiration of the original term of the copyright in the novel and Miss Hull's succession to the renewal term, all rights of defendants and their predecessors to authorize the exhibition of the motion picture terminated. Defendants-appellants contend that while after the expiration of the original term of the copyright in the novel and the daughter's succession, no new motion picture versions could lawfully be made on the basis of the 1925 grant from Mrs. Hull, their predecessors and they were entitled to renew the copyright on a film already made and copyrighted and to authorize its exhibition.

I.

In endeavoring to answer the question here posed, we turn first to the words of the statute. Derivative copyright is provided for in 17 U.S.C. § 7, which states in pertinent part:

Compilations or abridgments, adaptations, arrangements, dramatizations, translations, or other versions of works in the public domain or of copyrighted works when produced with the consent of the proprietor of the copyright in such works . . . shall be regarded as new works subject to copyright under the provisions of this title; but the publication of any such new works shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof, or be construed to imply an exclusive right to such use of the original works, or to secure or extend copyright in such original works.

Section 24 of title 17 begins by stating that "(t)he copyright secured by this title shall endure for twenty-eight years from the date of first publication." An initial proviso states that in several cases there enumerated, including "any work copyrighted . . . by an employer for whom such work is made for hire," the proprietor of the copyright shall be entitled to renewal and extension for a further twenty-eight year term. The problem here arises from a second proviso, stating in pertinent part:

That in the case of any other copyrighted work . . . the author of such work, if still living, or the widow, widower, or children of the author, if the author be not living, . . . shall be entitled to a renewal and extension of the copyright in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright . . . .

The thrust of the portion of § 7 down to the semicolon and it is a strong thrust is rather clear. ³ Doubtless aware, even in those simpler days, that new versions of copyrighted works might involve a degree of intellectual effort and expense quite as great as or considerably greater than the contribution of the author of the underlying work, Congress provided that derivative works "shall be regarded as new works subject to copyright under the provisions of this title" (emphasis supplied); plaintiffs-appellees do not dispute that the current proprietor of such a copyright, if the work was originally copyrighted as a work "made for hire", is entitled to effect a renewal of the derivative copyright under § 24. Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697 (2 Cir. 1941); Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213 (2 Cir.), cert. denied, 409 U.S. 997, 93 S.Ct. 320, 34 L.Ed.2d 262 (1972).

When we look to the second half of the sentence, taking the subjects in reverse order, we find that defendants-appellants are not attempting "to secure or extend copyright" in Mrs. Hull's original work. Likewise they do not assert that Killiam's derivative copyright implies "an exclusive right to such use of the original works"; they concede that any such exclusive right would rest on the agreement of December 7, 1925 and at least implicitly that any such exclusivity, as distinguished from a right of continued use, terminated with the original term of the copyright on the novel. Likewise they do not assert that the publication of the derivative work has any effect on the "validity" of any subsisting copyright. Plaintiffs say, however, that defendants' acts do affect the "force" of Miss Hull's renewal copyright on the novel, since the defendants are invading their exclusive right under § 1 of the Copyright Act...