Silverman v. CBS Inc.
| Decision Date | 06 February 1989 |
| Docket Number | D,No. 1175,1175 |
| Citation | 9 USPQ2d 1778,870 F.2d 40 |
| Parties | 1989 Copr.L.Dec. P 26,381, 9 U.S.P.Q.2d 1778 Stephen M. SILVERMAN, Plaintiff-Appellant, v. CBS INC., Defendant-Appellee. ocket 88-7165. |
| Court | U.S. Court of Appeals — Second Circuit |
Barry I. Fredericks, New York City (Aurnou & Fredericks, New York City, on the brief), for plaintiff-appellant.
David Rabinowitz, New York City (Stanley Rothenberg, Moses & Singer, New York City, on the brief), for defendant-appellee.
Before FEINBERG, NEWMAN and PRATT, Circuit Judges.
This appeal presents somewhat novel issues of both copyright and trademark law arising from the efforts of appellant Stephen M. Silverman to develop a musical based on the "Amos 'n' Andy" characters. 1 The attempt to transport Amos, Andy, Kingfish, Algonquin J. Calhoun, and all the others from the well-known radio and television shows of earlier decades to Broadway (possibly in a cab of the Fresh Air Taxi Co.) has thus far been stymied by the assertion of copyright and trademark infringement claims by appellee CBS Inc. Silverman appeals from a judgment of the District Court for the Southern District of New York (Gerard L. Goettel, Judge) awarding CBS damages, declaratory relief, and an injunction. Because some "Amos 'n' Andy" materials are in the public domain while others remain subject to CBS copyrights, and because CBS has elected not to make commercial use of its "Amos 'n' Andy" radio and television programs, nor create new ones, since 1966, the issues primarily raised on this appeal are the extent of copyright protection available to CBS with respect to the "Amos 'n' Andy" characters and whether CBS has abandoned through non-use whatever trademarks it might have. We conclude that to a limited extent copyright infringement has occurred, that the declaratory and injunctive relief awarded CBS should be modified to avoid extension of copyright protection to public domain materials, that Silverman is entitled to limited declaratory relief, and that CBS's trademarks, if valid, have been abandoned.
The "Amos 'n' Andy" characters were created in 1928 by Freeman F. Gosden and Charles J. Correll, who wrote and produced for radio broadcasting "The Amos 'n' Andy Show." The show became one of the country's most popular radio programs. The characters in the Amos 'n' Andy programs were Black. Gosden and Correll, who were White, portrayed Amos and Andy on radio. The authors appeared in blackface in publicity photos. Black actors played the parts in the subsequent television programs.
Gosden and Correll assigned all of their rights in the "Amos 'n' Andy Show" scripts and radio programs to CBS Inc. in 1948. Gosden and Correll continued to create new "Amos 'n' Andy" scripts, which formed the basis for CBS radio programs. The radio programs continued until 1955. Beginning in 1951 CBS also broadcast an "Amos 'n' Andy" television series. The television series was aired on CBS affiliate stations until 1953 and continued in reruns and non-network syndication until 1966. CBS has not aired or licensed for airing any of the radio or television programs since 1966.
In 1981, Silverman began writing a script for a Broadway musical based on the "Amos 'n' Andy" characters. The title of this work was originally "Amos 'n' Andy Go To The Movies." A revision was titled "Amos 'n' Andy In Hollywood," and a more extensive revision was titled "Fresh Air Taxi." Silverman sought a license to use the "Amos 'n' Andy" characters, but CBS refused.
Silverman filed this lawsuit seeking a declaration that the "Amos 'n' Andy" radio programs broadcast from March 1928 through March 1948 (the "pre-1948 radio programs") are in the public domain and that he is therefore free to make use of the content of the programs, including the characters, character names, and plots. He also sought a declaration that CBS has no rights in these programs under any body of law, including statutory and common law copyright law and trademark law. CBS asserted five counterclaims: (1) that Silverman's scripts infringed CBS's copyrights in the scripts for three post-1948 radio programs; (2) that the Silverman scripts violated section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), by infringing various CBS trademarks, including "AMOS 'N' ANDY", the names of various characters such as "George ('Kingfish') Stevens," "Madame Queen," and "Lightnin'," and various phrases such as "Scuse me for protruding," "splain dat," and "Holy mackral" (perhaps Amos's best-known contribution to the language); (3) that the infringement of CBS's trademarks also violated CBS's rights under state unfair competition and anti-dilution law; (4) that Silverman had misappropriated CBS's goodwill associated with the "Amos 'n' Andy" programs and trademarks; and (5) that Silverman had obtained improper copyright registration of his first movie script, claiming it to be an original work, whereas it used protected material from scripts in which CBS held copyrights.
Judge Goettel adjudicated the plethora of issues before him in three stages, writing thoughtful opinions at each stage. The initial decision granted in part and denied in part CBS's motion for summary judgment. Silverman v. CBS, 632 F.Supp. 1344 (S.D.N.Y.1986) (hereafter "Silverman I "). Judge Goettel ruled initially that since all of the works in which CBS claims a statutory copyright were created long before January 1, 1978, the effective date of the 1976 Copyright Act, 17 U.S.C. Secs. 101-914 (1982 and Supp. IV 1986), the copyright issues were primarily governed by the Copyright Act of 1909. Act of March 4, 1909, ch. 320, 35 Stat. 1075. The District Judge then considered CBS's copyright claims with respect to the pre-1948 radio programs, the post-1948 radio programs, and the television programs.
With respect to the pre-1948 radio programs, Judge Goettel ruled that the scripts for these programs were in the public domain because the copyrights in these scripts, originally obtained by Gosden and Correll, had not been renewed. Id. at 1350. He also ruled that the broadcasts of these programs (presumably the audiotapes of the broadcasts) were entitled to common law copyright protection because the broadcasts did not constitute publication, and publication had not otherwise occurred. Id. That ruling, however, does not appear to have affected the judgment that was ultimately entered. The District Judge did not rule that Silverman's scripts infringed CBS's rights in the pre-1948 broadcasts, nor did he rule that Silverman was entitled to a declaration of the right to use material from these broadcasts. Judge Goettel expressed the view that though CBS had the right to prevent copying of "the sound recordings of the radio shows," CBS's rights in the pre-1948 programs were "immaterial" because Silverman did not plan to use recordings of these programs in his musical. 2 Id.
Turning next to the post-1948 radio programs, Judge Goettel ruled that CBS had common law copyrights in the scripts for these programs, which became statutory copyrights pursuant to the 1976 Act when CBS registered these scripts with the Copyright Office in early 1985. Id. at 1351. The District Judge then found that Silverman had had access to the scripts and had listened to the broadcasts, that the first script for his musical indisputably contained substantial portions of dialogue from at least one of the post-1948 radio scripts, and that Silverman was therefore liable for copyright infringement. 3 Id. at 1351-52. Summary judgment was granted to CBS on its first and fifth counterclaims.
Turning next to the television programs, the District Judge noted that CBS had obtained copyright registrations and renewals for the televised programs (which were fixed in the tangible medium of film or videotape). He then rejected Silverman's claim that CBS had placed these telecasts in the public domain by publishing them without copyright notice. Recognizing that broadcasting the television programs was not publication, Silverman had nevertheless contended that CBS had made a sufficiently broad distribution of the programs to constitute publication by reason of the distribution of copies of the programs to affiliate and non-affiliate stations. Silverman relied primarily on the practice known as "bicycling," whereby one television station forwards the program to another. Judge Goettel expressed some doubt that the record assembled on summary judgment supported the claim, but ruled in any event that distribution of copies for "synchronized national broadcast" was not a general publication. Id. at 1353-54.
Then, facing the issue of the scope of copyright protection for the television programs, Judge Goettel focused on the graphic representation of the "Amos 'n' Andy" characters in the telecasts. Mindful that the pre-1948 radio scripts were in the public domain, he framed the key question to be "are characters that are in the public domain in a literary work protectable by copyright in an audiovisual presentation?" Id. at 1355. The District Judge answered "yes" and ruled that "duplication of the characters as they appeared on television would infringe CBS's copyrights." Id. Reaching the issue of infringement, Judge Goettel then ruled that substantial similarity could not be determined until the characters in Silverman's musical were seen on stage, and he therefore dismissed the counterclaim as unripe to the extent that it sought relief for infringement of the television programs. Id.
On the trademark side of the case, Judge Goettel ruled that the name "Amos 'n' Andy," as well as the names and appearances of "Amos 'n' Andy" characters and "other distinctive features of the ... radio and television shows" are protectable marks. Id. at 1356. He then set down for trial the issue of whether CBS's non-use of the marks constituted abandonment. Finally, he ruled that the issue of trademark...
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