Childress v. Taylor

• Decision Date: 18 September 1991
• Docket Number: D,No. 1764,1764
• Citation: 945 F.2d 500
• Parties: 1991 Copr.L.Dec. P 26,808, 20 U.S.P.Q.2d 1191, 19 Media L. Rep. 1321 Alice CHILDRESS, Plaintiff-Appellee, v. Clarice TAYLOR, Paul B. Berkowsky, the Moms Company, and Ben Caldwell, Defendants-Appellants. ocket 91-7309.
• Court: U.S. Court of Appeals — Second Circuit

Page 500

945 F.2d 500

1991 Copr.L.Dec. P 26,808, 20 U.S.P.Q.2d 1191,

19 Media L. Rep. 1321

Alice CHILDRESS, Plaintiff-Appellee, v. Clarice TAYLOR, Paul B. Berkowsky, the Moms Company, and Ben

Caldwell, Defendants-Appellants.

No. 1764, Docket 91-7309.

United States Court of Appeals, Second Circuit.

Argued July 8, 1991.

Decided Sept. 18, 1991.

Peter Herbert, New York City (Baila H. Celedonia, Richard S. Mandel, Alasdair J. McMullan, Cowan, Liebowitz & Latman, New York City, on the brief), for defendants-appellants.

David Blasband, New York City (Nancy F. Wechsler, Jessica R. Friedman, Deutsch Klagsbrun & Blasband, on the brief), for plaintiff-appellee.

Before MESKILL, NEWMAN, and PRATT, Circuit Judges.

JON O. NEWMAN, Circuit Judge:

This appeal requires consideration of the standards for determining when a contributor to a copyrighted work is entitled to be regarded as a joint author. The work in question is a play about the legendary Black comedienne Jackie "Moms" Mabley. The plaintiff-appellee Alice Childress claims to be the sole author of the play. Her claim is disputed by defendant-appellant Clarice Taylor, who asserts that she is a joint author of the play. Taylor, Paul B. Berkowsky, Ben Caldwell, and the "Moms" Company appeal from the February 21, 1991, judgment of the District Court for the Southern District of New York (Charles S. Haight, Jr., Judge) determining, on motion for summary judgment, that Childress is the sole author. We affirm.

Facts

Defendant Clarice Taylor has been an actress for over forty years, performing on stage, radio, television, and in film. After portraying "Moms" Mabley in a skit in an off-off-Broadway production ten years ago, Taylor became interested in developing a play based on Mabley's life. Taylor began to assemble material about "Moms" Mabley, interviewing her friends and family, collecting her jokes, and reviewing library resources.

In 1985, Taylor contacted the plaintiff, playwright Alice Childress, about writing a play based on "Moms" Mabley. Childress had written many plays, for one of which she won an "Obie" award. Taylor had known Childress since the 1940s when they were both associated with the American Negro Theatre in Harlem and had previously acted in a number of Childress's plays.

When Taylor first mentioned the "Moms" Mabley project to Childress in 1985, Childress stated she was not interested in writing the script because she was too occupied with other works. However, when Taylor approached Childress again in 1986, Childress agreed, though she was reluctant due to the time constraints involved. Taylor had interested the Green Plays Theatre in producing the as yet unwritten play, but the theatre had only one slot left on its summer 1986 schedule, and in order to use that slot, the play had to be written in six weeks.

Taylor turned over all of her research material to Childress, and later did further research at Childress's request. It is undisputed that Childress wrote the play, entitled "Moms: A Praise Play for a Black Comedienne." However, Taylor, in addition to providing the research material, which according to her involved a process of sifting through facts and selecting pivotal and key elements to include in a play on "Moms" Mabley's life, also discussed with Childress the inclusion of certain general scenes and characters in the play. Additionally, Childress and Taylor spoke on a regular basis about the progress of the play.

Taylor identifies the following as her major contributions to the play: (1) she learned through interviews that "Moms" Mabley called all of her piano players "Luther," so Taylor suggested that the play include such a character; (2) Taylor and Childress together interviewed Carey Jordan, "Moms" Mabley's housekeeper, and upon leaving the interview they came to the conclusion that she would be a good character for the play, but Taylor could not recall whether she or Childress suggested it; (3) Taylor informed Childress that "Moms" Mabley made a weekly trip to Harlem to do ethnic food shopping; (4) Taylor suggested a street scene in Harlem with speakers because she recalled having seen or listened to such a scene many times; (5) the idea of using a minstrel scene came out of Taylor's research; (6) the idea of a card game scene also came out of Taylor's research, although Taylor could not recall who specifically suggested the scene; (7) some of the jokes used in the play came from Taylor's research; and (8) the characteristics of "Moms" Mabley's personality portrayed in the play emerged from Taylor's research. Essentially, Taylor contributed facts and details about "Moms" Mabley's life and discussed some of them with Childress. However, Childress was responsible for the actual structure of the play and the dialogue.

Childress completed the script within the six-week time frame. Childress filed for and received a copyright for the play in her name. Taylor produced the play at the Green Plays Theatre in Lexington, New York, during the 1986 summer season and played the title role. After the play's run at the Green Plays Theatre, Taylor planned a second production of the play at the Hudson Guild Theatre in New York City.

At the time Childress agreed to the project, she did not have any firm arrangements with Taylor, although Taylor had paid her $2,500 before the play was produced. On May 9, 1986, Taylor's agent, Scott Yoselow, wrote to Childress's agent, Flora Roberts, stating:

Per our telephone conversation, this letter will bring us up-to-date on the current status of our negotiation for the above mentioned project:

1. CLARICE TAYLOR will pay ALICE CHILDRESS for her playwriting services on the MOMS MABLEY PROJECT the sum of $5,000.00, which will also serve as an advance against any future royalties.

2. The finished play shall be equally owned and be the property of both CLARICE TAYLOR and ALICE CHILDRESS.

It is my understanding that Alice has commenced writing the project. I am awaiting a response from you regarding any additional points we have yet to discuss.

Flora Roberts responded to Yoselow in a letter dated June 16, 1986:

As per our recent telephone conversation, I have told Alice Childress that we are using your letter to me of May 9, 1986 as a partial memo preparatory to our future good faith negotiations for a contract. There are two points which I include herewith to complete your two points in the May 9th letter, i.e.:

1) The $5,000 advance against any future royalties being paid by Clarice Taylor to Alice Childress shall be paid as follows. Since $1,000 has already been paid, $1,500 upon your receipt of this letter and the final $2,500 to be paid upon submission of the First Draft, but in no event later than July 7, 1986.

2) It is to be understood that pending the proper warranty clauses to be included in the contract, Miss Childress is claiming originality for her words only in said script.

After the Green Plays Theatre production, Taylor and Childress attempted to formalize their relationship. Draft contracts were exchanged between Taylor's attorney, Jay Kramer, and Childress's agent, Roberts. During this period, early 1987, the play was produced at the Hudson Guild Theatre with the consent of both Taylor and Childress. Childress filed for and received a copyright for the new material added to the play produced at the Hudson Guild Theatre.

In March 1987, Childress rejected the draft agreement proposed by Taylor, ¹ and the parties' relationship deteriorated. Taylor decided to mount another production of the play without Childress. Taylor hired Ben Caldwell to write another play featuring "Moms" Mabley; Taylor gave Caldwell a copy of the Childress script and advised him of elements that should be changed.

The "Moms" Mabley play that Caldwell wrote was produced at the Astor Place Theatre in August 1987. ² No reference to Childress was made with respect to this production. However, a casting notice in the trade paper "Back Stage" reported the production of Caldwell's play and noted that it had been "presented earlier this season under an Equity LOA at the Hudson Guild Theatre."

Flora Roberts contacted Jay Kramer to determine whether this notice was correct. Kramer responded:

Ben Caldwell has written the play which I will furnish to you when a final draft is available. We have tried in every way to distinguish the new version of the play from what was presented at the Hudson Guild, both by way of content and billing.

Undoubtedly, because of the prevalence of public domain material in both versions of the play, there may be unavoidable similarities. Please also remember that Alice was paid by Clarice for rights to her material which we have never resolved.

Kramer never sent a copy of Caldwell's play. Childress's attorney, Alvin Deutsch, sent Kramer a letter advising him of Childress's rights in the play as produced at the Hudson Guild and of her concerns about the advertising connecting Caldwell's play to hers. For example, one advertisement for Caldwell's play at the Astor Place Theatre quoted reviews referring to Childress's play. Other advertisements made reference to the fact that the play had been performed earlier that season at the Hudson Guild Theatre.

Childress sued Taylor and other defendants alleging violations of the Copyright Act, 17 U.S.C. § 101 et seq. (1988), the Lanham Act, 15 U.S.C. §§ 1051, 1125(a) (1988), and New York's anti-dilution statute, N.Y. Gen.Bus.Law § 368-d (McKinney 1984). Taylor contended that she was a joint author with Childress, and therefore shared the rights to the play. Childress moved for summary judgment, which the District Court granted. The Court concluded that Taylor was not a joint author of Childress's play and that Caldwell's play was substantially similar to and infringed Childress's play. In rejecting Taylor's claim of joint authorship, Judge Haight ruled (a) that a work qualifies as a "joint work" under the definition section of the Copyright Act, 17...