Lone Ranger Television, Inc. v. Program Radio Corp.

• Decision Date: 26 July 1984
• Docket Number: No. 82-4690,82-4690
• Citation: 740 F.2d 718
• Parties: , 1984 Copr.L.Dec. P 25,691 LONE RANGER TELEVISION, INC., a corporation, Plaintiff-Appellee, v. PROGRAM RADIO CORPORATION, a California corporation, JL Productions, Inc., a business entity, and Weston E. Lewis, Jr. aka Jim Lewis, Defendants-Appellants.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 718

740 F.2d 718

223 U.S.P.Q. 112, 1984 Copr.L.Dec. P 25,691

LONE RANGER TELEVISION, INC., a corporation, Plaintiff-Appellee, v. PROGRAM RADIO CORPORATION, a California corporation, JL Productions, Inc., a business entity, and Weston E. Lewis, Jr. aka Jim Lewis Defendants-Appellants.

No. 82-4690.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted March 13, 1984.

Decided July 26, 1984.

Thomas E. Schatzel, Bruce G. Spicer, Santa Clara, Cal., for plaintiff-appellee.

Thomas Doniger, Stanton & Oberstein, Los Angeles, Cal., for defendants-appellants.

Appeal from the United States District Court for the Northern District of California.

Before WALLACE, KENNEDY, and CANBY, Circuit Judges.

WALLACE, Circuit Judge:

This appeal from summary judgment for federal copyright infringement and state law conversion requires us to return to the yesteryear of the Lone Ranger, and to the Copyright Act of 1909. We have jurisdiction under 28 U.S.C. Sec. 1291, and we affirm.

I

Around 1953, a Michigan company called The Lone Ranger, Incorporated owned several original scripts for radio plays about the Lone Ranger, a fictitious early Western hero. In part, this case involves twelve of those scripts. The company also owned three scripts of the first adventures of the Lone Ranger it planned to use for phonograph records. By 1954 the company held federal copyrights in all fifteen scripts. Meanwhile, it had recorded a production of each episode on magnetic tape. It first broadcast the radio plays in 1953 and 1954.

During 1954 The Lone Ranger, Incorporated transferred all rights in the tapes and the fifteen scripts to a California corporation with the same name. In 1962, the California company merged with the Wrather Corporation (Wrather). The rights to the scripts and tapes passed to Wrather, which later transferred them to a subsidiary, Lone Ranger Television, Incorporated (Lone Ranger TV). The copyrights in all fifteen scripts remained valid, either in their original term or by renewal.

Since at least 1960, the scripts' copyright owners have granted an exclusive license to lease Lone Ranger episodes for radio play. Since 1965, Charles Michelson, Incorporated has held this exclusive license. The scripts' copyright owners have also licensed various wholesalers and retailers to sell Lone Ranger records and cassette tapes for private home use. Both the tapes leased to radio stations and the recordings sold for home use contain a copyright notice.

In 1979, Jim Lewis, a former radio announcer, began unlicensed leasing of Lone Ranger episodes to radio stations. He bought reel-to-reel copies of the tapes from some collectors and re-mixed the recordings onto broadcast cartridges for radio play. The original tapes contained a copyright notice by The Lone Ranger, Incorporated at the end of each episode. Lewis's tapes reproduced this notice, although with disputed clarity.

Early in 1982 Lone Ranger TV sued Lewis and his two distribution companies, JL Productions and Program Radio Corporation (collectively Program Radio) in federal district court in California, claiming, among other things, infringement of its federal copyrights in the fifteen scripts and conversion of its intangible property rights in the tapes. As the company later made clear, its claimed rights in the tapes derived from California law. All the parties reside in California.

The district court permanently enjoined Program Radio from leasing the Lone Ranger tapes or otherwise infringing Lone Ranger TV's copyrights in the scripts. After denying Program Radio's motion for partial summary judgment, vacation of the injunction, and return of some tapes confiscated under a writ of seizure, the district court ordered Program Radio's counsel to pay $1,100 in fees under 28 U.S.C. Sec. 1927. The district court had found counsel's motion, based on arguments of failure to register the copyrights and failure to record transfers of the copyrights, "patently frivolous." Finally, despite various arguments of estoppel, laches, unclean hands, innocent infringement, double recovery, federal preemption, and public domain, the district court granted summary judgment against Program Radio for federal copyright infringement and for conversion. It awarded Lone Ranger TV federal statutory damages, damages for state law conversion, attorney's fees under federal law, and costs. Program Radio appealed.

II

In reviewing a summary judgment, we consider the evidence in the light most favorable to the losing party, and determine de novo whether there is any genuine issue of material fact and whether the winner is entitled to judgment as a matter of law. See M/V American Queen v. San Diego Marine Construction Corp., 708 F.2d 1483, 1487 (9th Cir.1983); Fed.R.Civ.P. 56(c). The scope of an injunction, even on summary judgment, lies in the district court's discretion, see, e.g., Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 1256 n. 16 (9th Cir.1982), as does an award of attorney's fees against counsel under 28 U.S.C. Sec. 1927 if supported by a not clearly erroneous finding of wrongful intent, recklessness, or bad faith, see Barnd v. City of Tacoma, 664 F.2d 1339, 1342-43 (9th Cir.1982); see also Masalosalo ex rel. Masalosalo v. Stonewall Insurance Co., 718 F.2d 955, 957 (9th Cir.1983). We address first, the summary judgment of injunctive relief and damages for federal copyright infringement; second, the summary judgment of damages for state law conversion of intangible property rights; and last, the award of partial attorney's fees against counsel under 28 U.S.C. Sec. 1927.

III

The Copyright Act of 1909, Act of March 4, 1909, ch. 320, 35 Stat. 1075, reprinted at 17 U.S.C.A. app. Secs. 1-216 (West Supp.1983) (1909 Act), did not permit owners of copyrights in scripts to copyright separately any sound recordings produced from them. When the 1909 Act was repealed by the Copyright Act of 1976, Pub.L. No. 94-553, tit. I, Secs. 101-810, 90 Stat. 2541 (codified as amended at 17 U.S.C. Secs. 101-810) (1976 Act), protection of sound recordings of copyrighted scripts was not extended to those "fixed" for playing before 1972. See Goldstein v. California, 412 U.S. 546, 568, 93 S.Ct. 2303, 2315, 37 L.Ed.2d 163 (1973). Consequently, Lone Ranger TV has never registered any separate federal copyrights in the Lone Ranger tapes. Program Radio argues that, in the absence of such separate copyrights, duplication and distribution of the tapes cannot amount to a federal infringement. We disagree. Lone Ranger TV's valid copyrights in the underlying scripts secure to it, as Program Radio admits, the right to produce derivative works from them. Program Radio has infringed this right.

A.

Program Radio admits that Lone Ranger TV's licensed broadcasts, leases, and sales of recordings based on the scripts have not dedicated the scripts to the public domain for purposes of federal copyright protection. Cf., e.g., 17 U.S.C.A. app. Sec. 7 (West Supp.1983) (1909 Act) (publication of "adaptations ... dramatizations ... or other versions ... of copyrighted works ... with the consent of the proprietor ... shall not affect ... any subsisting copyright"). It continues to claim, however, that Lone Ranger TV has not properly recorded the transfers of title in the scripts' copyrights, and thus may not sue for their infringement. See 17 U.S.C. Sec. 205(d). The district court found this defense meritless, and we agree. The record adequately shows original ownership of copyrights in the scripts by The Lone Ranger Incorporated of Michigan, a recorded transfer of those copyrights to The Lone Ranger Incorporated of California, and subsequent recorded transfers from The Lone Ranger Incorporated of California to Wrather, and from Wrather to Lone Ranger TV. No genuine issue of material fact exists as to the continued validity of Lone Ranger TV's copyrights in the scripts or its right to sue on them for infringement.

B.

Although Lone Ranger TV holds valid copyrights in the scripts, Program Radio correctly refused to consider the tapes produced by the copyright owners as "copies" of the scripts under the 1909 Act. See generally 1 M. Nimmer, Nimmer on Copyright Sec. 2.03[B] at 2-29 (1983); see also Sony Corp. of America v. Universal City Studios, Inc., --- U.S. ----, 104 S.Ct. 774, 804 n. 24, 78 L.Ed.2d 574 (1984) (Blackmun, J., dissenting) (Sony); White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 17, 28 S.Ct. 319, 323, 52 L.Ed. 655 (1908) (copy must be "in a form which others can see and read"). However, the 1909 Act not only restricted to the copyright holder the right to copy an original writing, see 17 U.S.C.A. app. Sec. 1(a) (West Supp.1983); it also restricted to the holder the sole rights to prepare derivative works from a literary writing, see 17 U.S.C.A. app. Sec. 1(b) (West Supp.1983) ("To translate ... or make any other version thereof, if it be a literary work; ..."), and to "produce, or reproduce ... in any manner or by any method whatsoever" a dramatic work, see 17 U.S.C.A. app. Sec. 1(d) (West Supp.1983). These provisions give the copyright holder an exclusive right to derivative productions from his copyrighted scripts. See also 17 U.S.C.A. app. Sec. 7 (West Supp.1983); cf. 17 U.S.C. Sec. 106(2) (1976 Act's specific protection of derivative rights). As one commentator distinguishes between such a derivative right and a right to copy: "It is that point at which the contribution of independent expression to an existing work effectively creates a new work for a different market." Goldstein, Derivative Rights and Derivative Works in Copyright, 30 J. Copyright Soc'y U.S.A. 209, 217 (1983). Cf. Sony, 104 S.Ct. at 811 (Blackmun, J., dissenting). The Lone Ranger tapes meet this test: the contribution of independent expression by the actors, together with the contribution of independent expression by the special production methods of taping and editing for radio, effectively created a new work for a market...