Allied Artists Pictures Corp. v. Friedman

• Decision Date: 15 March 1977
• Citation: 68 Cal.App.3d 127,137 Cal.Rptr. 94
• Court: California Court of Appeals Court of Appeals
• Parties: ALLIED ARTISTS PICTURES CORPORATION, Plaintiff, Respondent and Cross-Appellant, v. David FRIEDMAN, Defendant, Appellant and Cross-Respondent. Civ. 48706.

Page 94

137 Cal.Rptr. 94

68 Cal.App.3d 127

ALLIED ARTISTS PICTURES CORPORATION, Plaintiff, Respondent and Cross-Appellant, v. David FRIEDMAN, Defendant, Appellant and Cross-Respondent.

Civ. 48706.

Court of Appeal, Second District, Division 2, California.

March 15, 1977.

Hearing Denied May 12, 1977.

Dern, Mason, Swerdlow & Floum by Richard H. Floum, Beverly Hills, for plaintiff.

Fleishman, Brown, Weston & Rhode by Stanley Fleishman, Los Angeles, for defendant.

COMPTON, Associate Justice.

In the early 1950s, a book entitled 'Historie d'O' was published in France. Plaintiff Allied Artists Pictures Corp. (Allied) euphemistically describes the book as 'worldwide classic of erotic literature.' An English translation of the book has been widely distributed in the United States since 1965 by Grove Press, Inc. (not a party to this action) under the title 'The Story of O.'

In early 1975, a film based on the book and entitled 'Histoire d'O' was produced in France. At about the same time production was commenced in the United States of a low budget film entitled 'The Journey of O'. The latter is not based on the book and from what appears in the record there is no similarity to the film 'Histoire d'O' except for its admitted theme of sexual exploitation and the fact that the principal character in each film is called 'O'.

Following its release in mid-1975, the film 'Histoire d'O' was widely advertised, distributed and viewed in France. As early as September 1975, the film was the subject of reviews in major United States publications such as Newsweek and Time Magazines.

In the meantime, however, defendant David Friedman, doing business as Equal Opportunities, Inc., in August of 1975, obtained the distribution rights to the American made 'The Journey of O' and shortly thereafter the film was playing at theatres in Chicago, Illinois, and Charlotte, North Carolina.

Later, in October of 1975, Allied acquired the United States distribution rights to the French made film 'Histoire d'O'. It paid $400,000 for these rights. Allied embarked on a massive advertising and promotional campaign. The film opened in the United States in a theatre in New York City in November of 1975 under the English translated title 'The Story of O'. It was apparently well attended and well received by reviewers.

On December 2, 1975, Allied commenced an action in the Superior Court of Los Angeles County, the county of defendant's residence and place of business. Allied's complaint alleged that defendant's use of the title 'The Journey of O' amounted to unfair competition in that the title was confusingly similar to Allied's title and was calculated to deceive the public into believing that 'The Journey of O' was 'The Story of O'. Allied sought a temporary and permanent injunction preventing defendant from using the title 'The Journey of O' or any other 'confusingly similar title.'

In support of its petition for a preliminary injunction Allied filed a declaration by Mr. Peter Strauss, executive vice-president of Allied. Strauss stated that the title 'The Story of O' had acquired a secondary meaning in the minds of the public connecting the title with the book being distributed in the United States by Grove Press, Inc. and that 'numerous movie going patrons will go to see the picture because it bears the same title as the book.'

Strauss further declared that as of the time of the filing of the action the picture had been widely acclaimed and on the basis of its success in New York had received approximately $1,000,000 in advance bookings and was scheduled to open in 35 to 40 first run theaters throughout the United States.

Allied's investment up to that point was $250,000 in advertising in addition to the $400,00 paid for the distribution rights. Another $200,000 was projected for additional prints of the film and $1,500,000 for future advertising.

The trial court after a hearing based upon opposing written declarations and oral argument declared that Allied had established a secondary meaning 'between that certain French motion picture concerning which plaintiff has the American distribution rights to and the English title to said motion picture, to wit, 'The Story of O' and that the title of defendant's picture 'The Journey of O' was 'confusingly similar.'

Based on that conclusion the trial court issued a temporary injunction which required defendant in California to include in all of its advertisements, including promotional 'trailers,' the phrase 'not to be confused with Allied Artists Pictures' 'The Story of O".

Defendant appealed from the order, Allied cross-appealed, contending that the injunction should extend beyond the boundaries of California and should require defendant to change the name of his film.

The defendant's contentions can be summarized as follows.

(1) That the English translated title 'The Story of O' had acquired no secondary meaning in the United States in relation to the film, and

(2) In any event Allied who was merely a distributor, albeit an exclusive distributor failed to establish that its distribution rights included 'property rights' in the title.

Taking up defendant's latter contention first, his reliance on the concept of a property right is misplaced. Allied does not and indeed cannot rest its claim on a theory of appropriation of a property right in the title.

As we pointed out in Tomlin v. Walt Disney Productions, 18 Cal.App.3d 226, at 234, 96 Cal.Rptr. 118 the state's power to protect literary titles, which are not afforded protection by federal copyright laws, cannot be based on any theory of appropriation of a property right. The gravamen of the action is unfair competition. A title of a literary product is, like a label on other types of products, simply a means of identifying a product.

As was stated in Curtis v. 20th Century-Fox Film Corp., 140 Cal.App.2d 461, at 469, 295 P.2d 62, and quoted by us in Tomlin, 18 Cal.App.3d at page 230, 96 Cal.Rptr. at page 120, "Anyone may use a title if there is no secondary significance. Unfair competition consists in palming off one's goods as those of another. The mere use of a substantially similar title, if not used in such manner as to induce the public to believe that the work to which it is applied is the identical thing which it originally designated, does not constitute unfair competition."

On the other hand a state may protect a business in the use of trademarks or labels by requiring that appropriate steps be taken to prevent the consumer from being misled as to the content or source of the product. (Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661.) Allied, by virtue of its exclusive right to market the film in question in the United States, has a property right in the film sufficient to entitle it to protection against unfair competition. (Compare Metro-Goldwyn-Mayer, Inc. v. Lee, 212 Cal.App.2d 23, 27 Cal.Rptr. 833.) That right includes protection against the use of deceptive or misleading titles. The available protection in the area of titles is 'limited, however, to a narrowly drawn injunction requiring appropriate precautions to prevent public confusion . . ..' (Tomlin v. Walt Disney Productions, supra, 86 Cal.App.3d at p. 235, 96 Cal.Rptr. at p. 123.)

Of course the sine qua non of Allied's Claim of unfair competition in the use of the title 'The Journey of O' is establishing that the title 'The Story of O' had acquired a secondary meaning of identification with its film. (Jackson v. Universal Internat. Pictures, 36 Cal.2d 116, 222 P.2d 433.) Contrary to defendant's claim the necessary identification is with the literary work, the film, and not with Allied as the distributor. (See 23 A.L.R.2d 302; Jackson v. Universal Internat. Pictures, supra.)

It is undisputed that the film which Allied is distributing is the French film based on the book 'Histoire d'O'. It is further undisputed that the title 'Histoire d'O' enjoyed a secondary meaning in France in that it was widely identified with the basic story and thus it was understood by the public that the title identified either the book or its film version. The title 'The Story of O' is nothing more than the anglicization of 'Histoire d'O'.

Further defendant does not seriously dispute the fact that the title 'The Story of Q' acquired a secondary meaning in connection with the book distributed by Grove Press, Inc. In other words, that element of United States society that reads such material associated the title 'The Story of O' with the English translation of 'Histoire d'O'.

The question of whether a particular title has acquired a secondary meaning is one of fact. (Metro-Goldwyn-Mayer, Inc. v. Lee, supra; Johnston v. 20th Century-Fox Film Corp., 82 Cal.App.2d 796, 187 P.2d 474.) There is substantial evidence in the record to support the trial court's finding that the wide dissemination of the book by Grove Press, Inc., coupled with the publicity that the film had received from major publications in the United States, crseated in the minds of those persons who would patronize such films the understanding that 'The Story of O' was the French made film based upon that specific and well-known erotic novel.

It is unimportant that the secondary meaning resulted from the activities of persons other than Allied. (Metro-Goldwyn-Mayer, Inc. v. Lee, supra; Jackson v. Universal Internat. Pictures, supra; Goldman v....