Maxtone-Graham v. Burtchaell

• Decision Date: 04 April 1986
• Docket Number: No. 85 Civ. 1058-CLB.,85 Civ. 1058-CLB.
• Citation: 631 F. Supp. 1432
• Parties: Katrina MAXTONE-GRAHAM, Plaintiff, v. James Tunstead BURTCHAELL, Andrews & McMeel, Inc. and Harper & Row Publishers, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

631 F. Supp. 1432

Katrina MAXTONE-GRAHAM, Plaintiff, v. James Tunstead BURTCHAELL, Andrews & McMeel, Inc. and Harper & Row Publishers, Inc., Defendants.

No. 85 Civ. 1058-CLB.

United States District Court, S.D. New York.

April 4, 1986.

Steve Abel, Reeder, Abel & Kossin, New City, N.Y., for plaintiff.

David Schlee, Blum, Kaplan Friedman, New York City, for defendants.

MEMORANDUM & ORDER

BRIEANT, District Judge.

Plaintiff, Katrina Maxtone-Graham brought this complaint against Rev. James Tunstead Burtchaell, Andrews McMeel, Inc., and Harper & Row Publishers, Inc. for copyright infringement. By motions fully submitted November 14, 1985, Defendants have moved for summary judgment in their favor, and plaintiff has moved for summary judgment in her favor on the issue of liability.

In 1971 and 1972 Ms. Maxtone-Graham conducted a series of interviews with seventeen women who responded to her invitation. Each of these women discussed with Ms. Maxtone-Graham on a tape recorder her personal experiences and reactions after having had an unwanted pregnancy. All but four of them had undergone abortions. Each interviewee signed an agreement granting and releasing her rights and interest in the interview to Ms. Maxtone-Graham (Ex. C. to Defendant's Memorandum). These transfer agreements have not, however, been recorded.

After editing the transcripts of her interviews, Ms. Maxtone-Graham compiled them into a book entitled, Pregnant By Mistake. Liveright published the book in August 1973. Before it went out of print, Pregnant By Mistake sold approximately 2,300 copies, although almost 2,000 of them were sold in the first four months following publication.

In 1976 Rev. Burtchaell, a Roman Catholic priest and a Professor of Theology at the University of Notre Dame, decided to compose a set of essays on the subject and published them as a book entitled, Rachel Weeping¹. In his title essay Rev. Burtchaell presented and commented upon information from Pregnant By Mistake and another similar work, The Ambivalence of Abortion by Linda Bird Francke. Rev. Burtchaell quoted both books extensively in the essay, although with attribution. Approximately 7,000 of the 37,000 words in the first essay are direct quotations from the interviews in Ms. Maxtone-Graham's book. The first essay represents 60 pages out of a total of 325 pages of text in Rachel Weeping.

Rev. Burtchaell wrote to the publishers of both Pregnant By Mistake and The Ambivalence of Abortion for permission to quote from the works. Random House, Inc., publisher of the latter book, granted that permission in exchange for a $575 payment. Despite several letters and telephone calls to Liveright and its permissions editor, Ms. Mary Ryan, Rev. Burtchaell received no reply until August 1981. At that time Ms. Ryan asked Rev. Burtchaell to forward copy so that she could review the book. Rev. Burtchaell complied with her request. Three months later, in response to a telephone call from Rev. Burtchaell, Ms. Ryan telephoned him to report that Ms. Maxtone-Graham opposed granting the permission.

Rev. Burtchaell then wrote directly to Ms. Maxtone-Graham in an effort to persuade her to grant permission. In reply, Ms. Maxtone-Graham explained her refusal by writing that "the women I interviewed told their stories in order to further understanding of the Pro-Choice view. They believed — and expressly stated — that their material was not to be used for any other purpose. I promised to honor their wishes." Exhibit J to Defendants' Memorandum. Harper & Row published Rachel Weeping in April 1982, after advising Rev. Burtchaell that its legal counsel believed that his use of the quotations constituted "Fair Use" of the plaintiff's work.

Defendants have moved for summary judgment on the following two grounds: First, that Ms. Maxtone-Graham's failure to record the transfer agreements bars this action; and second, that Rev. Burtchaell's use of the quotations did not go beyond the amount permitted by the "Fair Use" doctrine.

Jurisdiction

Rev. Burtchaell quoted only the interviewees' words and not Ms. Maxtone-Graham's. She does not claim, therefore, that she has her own copyright interest in the portions used by Rev. Burtchaell. Nor can she make that claim. Courts have consistently held that "the use of conversations attributed to other persons cannot be a borrowing of copyrighted material, because of the Act's requirement, 17 U.S.C. § 102(a), that an author's work be his own and not originate in others." Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 205 (2d Cir.1983) rev'd on other grounds, ___ U.S. ___, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). She claims instead that she obtained a copyright in the words of the interviewees in her book as a result of written transfers. Defendants argue that the Copyright Act of 1976 requires her to record these transfers as a prerequisite to her suit. The relevant portion of the Act provides that:

No person claiming by virtue of a transfer to be the owner of copyright or of any exclusive right under a copyright is entitled to institute an infringement action under this title until the instrument of transfer under which such person claims has been recorded in the Copyright Office, but suit may be instituted after such recordation on a cause of action that arose before recordation. 17 U.S.C. § 205(d)

In 1973, when Ms. Maxtone-Graham published her book, a prior version of the Copyright Act was in effect. At that time, the Act did not require her to record the transfers to protect her copyright interest in them. See New Fiction Publishing Co. v. Star Co., 220 F. 994 (S.D.N.Y.1915). Ms. Maxtone-Graham claims that she would not have published the book if the copyright law had then required her to record each transfer agreement. This is because the interviewees, although they strongly support elective abortion, have, at the same time, insisted on keeping their identities secret; recordation of the transfer agreements would deny this promised anonymity because their names would be on file in the United States Copyright Office as a public record.

Defendants interpret 17 U.S.C. § 301(a), enacted as part of the 1976 Copyright Act as having the effect of making the Old Copyright Act provisions inapplicable to suits brought under the 1976 Act. Section 301(a) provides that:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished; are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

As the final sentence of this section suggests, and the Committee Report confirms, Congress included this provision to limit pre-existing state copyright protection schemes, and to make clear their intention to create a single Federal system for copyright protection. Thus, this section was included and framed in this manner "so as to foreclose any conceivable misinterpretation of its unqualified intention that Congress shall act preemptively, and to avoid the development of any vague borderline areas between State and Federal protection." Notes of Committee on the Judiciary, House Report cited in 17 U.S.C.A. § 301, at 271 (1977).

Contrary to defendants' assertions, § 301(a) does not preclude the application of the prior Federal copyright laws where appropriate to the case. Professor Nimmer has explained that "the ownership of rights asserted after January 1, 1978 will often turn on the validity of grants executed pre-1978." 3 Nimmer, The Law of Copyright, § 10.03B at 10-37. (emphasis added) Defendants do not assert that Ms. Maxtone-Graham failed to obtain the ownership of the rights. Rather they insist that this Court may not exercise jurisdiction of her claim unless and until she records the transfer agreements, something she cannot do without breaching her promise of anonymity given to the persons interviewed. She made this promise at a time when such a promise could be honored without rendering her copyright unenforceable.

Federal Courts have consistently required plaintiffs to record pre-1978 transfers before bringing infringement complaints. See, e.g., Nation's Choice Vitamin Co., Inc. v. General Mills, Inc., 526 F.Supp. 1014, 1017 (S.D.N.Y.1981). Plaintiffs have realized no hardship because of this requirement. They are permitted to record the transfers and subsequently amend their complaint or refile the action. See Northern Songs, Ltd. v. Distinguished Productions, 581 F.Supp. 638, 641 (S.D.N. Y.1984). That solution is apparently unavailable in this context. Ms. Maxtone-Graham's right, obtained under the prior law, permitted private enforcement of her copyright without recordation. She relied on this arrangement when she negotiated the transfers with the interviewees. Her ability to obtain candid and forthcoming interviews, or any interviews at all, would have been greatly diminished if she could not have promised anonymity. Plaintiff expended a significant investment of time and effort in preparing Pregnant by Mistake, and she expected to earn a financial reward for her endeavors. Without the copyright protection, and the economic incentive it provides, she would not have written the book. Her book, like Rachel Weeping, is a serious and scholarly work intended to add to public knowledge and discourse involving a significant moral, social and political issue.

Congress could not have intended the 1976 Act to bar the rights of those who own works published and copyrighted validly under the earlier Act, and find themselves unable for practical reasons then unforeseeable, to record...