Ball v. United Artists Corp.

• Decision Date: 25 April 1961
• Citation: 13 A.D.2d 133,214 N.Y.S.2d 219
• Parties: , 129 U.S.P.Q. 192 Thomas BALL and Lee Mortimer, Plaintiffs-Respondents, v. UNITED ARTISTS CORPORATION and Loew's Theatres, Inc., Defendants-Appellants.
• Court: New York Supreme Court — Appellate Division

Page 219

214 N.Y.S.2d 219

13 A.D.2d 133, 129 U.S.P.Q. 192

Thomas BALL and Lee Mortimer, Plaintiffs-Respondents, v. UNITED ARTISTS CORPORATION and Loew's Theatres, Inc. Defendants-Appellants.

Supreme Court, Appellate Division, First Department.

April 25, 1961.

Walter S. Beck, New York City, of counsel (Albert F. Smith, New York City, with him on the brief, Phillips, Nizer, Benjamin, Krim & Ballon, New York City), for defendants-appellants.

Maurice Shire, New York City, of counsel (Jonas Ellis, New York City, with him on the brief, Emil K. Ellis, New York City), for plaintiffs-respondents.

Before BOTEIN, P. J., and VALENTE, McNALLY, EAGER and BASTOW, JJ.

EAGER, Justice.

This is an appeal by defendants from an order entered December 28, 1960, denying in all respects their motion for summary judgment dismissing the complaint and for vacatur of notices of examination served by plaintiffs.

The action is at law to recover money damages for alleged wrongful use by defendants of the title 'China Doll' as the title of a motion picture released, distributed and shown by them. There are two alleged causes of action, namely, the first, to recover for the alleged wrongful acts of defendant in having 'unlawfully appropriated to their own use and pirated the said property of the plaintiffs' in said title. The theory of this cause is that plaintiffs have acquired and own a proprietary interest in the title 'China Doll' in that they formulated the same in the year 1946; in that thereafter they have used and extensively advertised and exploited the same as the name for a night club operation and as the title for revues; in that they have used the term in names of certain companies incorporated by them and in that the plaintiffs have licensed the use of such title by others for revues or theatrical or movie productions.

The second alleged cause is grounded on the theory of unlawful competition, the plaintiffs alleging that defendants with full knowledge of the rights of the plaintiffs, 'have competed and are competing unfairly with the plaintiffs and have caused confusion and deception in the minds of the public in creating the impression that the motion picture 'China Doll' is connected with and derived from the above stated endeavors of the plaintiffs in the entertainment field, and that plaintiffs are associated therewith.'

The answers of the defendants deny all material allegations of the complaint, and included therein is an alleged affirmative defense, 'that the title 'China Doll' has been used as a title for numerous theatrical and literary works * * * both before and after the alleged use of the words 'China Doll' by plaintiffs as a name for a Chinese restaurant; that the words 'China Doll' are descriptive words and have been used and were and are a common expression in use for many years long prior to the alleged use thereof by plaintiffs; and that * * * plaintiffs have no property rights in and to the words or title 'China Doll' and the same were and are in the public domain, and not susceptible of exclusive use or ownership by plaintiffs.'

The defendants, by material facts set up in their moving affidavit, establish prima facie that the action has no merit in that the expression 'China Doll' is a commonplace term or expression which has over the years been frequently used by divers persons as the title of literary works, plays and theatrical productions and in that the defendants' motion picture, using the title, has not competed in any way with any use of the title by plaintiffs.

Under the circumstances, where, as here, the defendants make a prima facie showing of lack of merit to the action, the plaintiffs were bound to come forward with proof of evidentiary facts showing that there is a bona fide issue requiring a trial (Shapiro v. Health Ins. Plan, 7 N.Y.2d 56, 63, 194 N.Y.S.2d 509, 515; Di Sabato v. Soffes, 9 A.D.2d 297, 193 N.Y.S.2d 184). Taking all the affidavits and proofs submitted, it is incumbent on the court to peruse the same to ascertain if there is here any real issue of fact for a trial. Sillman v. Twentieth Century-Fox Film Corp., 3 N.Y.2d 395, 404, 165 N.Y.S.2d 498; Di Sabato v. Soffes, supra, 9 A.D.2d at page 300, 193 N.Y.S.2d at page 189; Kramer v. Harris, 9 A.D.2d 282, 193 N.Y.S.2d 548. Lacking the appearance of a genuine and substantial issue of fact, the court may and should dispose of the matter upon the law, and direct judgment accordingly. Strasburger v. Rosenheim, 234 App.Div. 544, 547, 255 N.Y.S. 316, 320.

In determining the primary question involved, namely, whether or not there is here a genuine issue for trial, we must not lose sight of the nature of this particular action and the theory of plaintiffs' alleged causes. It is particularly important to note that the action is one brought at law by plaintiffs solely to recover damages for alleged wrongful acts of the defendants. Thus, inapplicable and of little help are the many decisions sustaining actions in equity for an injunction upon proof merely of a likelihood of deception in the use by a defendant of a name or title formerly or also used by plaintiff (see, for example, Famous Sea Food House v. Skouras, 272 App.Div. 258, 70 N.Y.S.2d 702).

With respect to plaintiffs' alleged first cause of action, it is to be noted that they claim, as set out in the affidavit of the plaintiff Lee Mortimer, that it 'proceeds on the theory that the defendants had unlawfully converted to their own use a title formulated and developed by plaintiffs', and that 'This cause of action is wholly independent of the 'secondary meaning' element'. They do not, however, claim to hold a duly registered trade-mark or a copyright in any way embracing the title. In fact, it appears without dispute that the particular term 'China Doll' was not originated by plaintiffs. ¹ They were not the first to coin and create the term as a title for use in connection with the arts, or in the world of entertainment. Thus, they cannot succeed on the theory that they acquired a property or exclusive rights in the title by reason of their alleged formulation and original development of the same in the year 1946. See, Beacon Magazines v. Popular Publications, 248 App.Div. 204, 288 N.Y.S. 909.

As a matter of law, one may not obtain a proprietary interest in a title or name merely by formulating the same from words in the English language and thereafter using it in connection with an enterprise. 'Despite a persistent belief that the first use of a specific name or description gives a power to such user to prevent its employment by others, it is important to find that no such doctrine exists.' Per Frank, J., in Avon Periodicals v. Ziff-Davis Pub. Co., 27 Misc.2d 160, 162, 113 N.Y.S.2d 737, 741, affirmed 282 App.Div. 200, 122 N.Y.S.2d 92, citing Federal Telephone & Radio Corp. v. Federal Television Corp., 2 Cir., 180 F.2d 250, opinion by Learned Hand, C. J.; Brown & Bigelow v. Remembrance Advertising Products, 27 Misc.2d 157, 113 N.Y.S.2d 855, Wasservogel, O. R., modified 279 App.Div. 410, 110 N.Y.S.2d 441, affirmed 304 N.Y. 909, 110 N.E.2d 736.

Apart from its use in connection with a person, a title or name is the means of designating anything and everything of which one may speak, be it tangible or intangible. Disassociated with the subject thereof, whatever it may be, a title or name composed of ordinary words, cannot acquire the status of property. So disassociated, it becomes merely words; and all words of our language are in the public domain. All who speak or write have an inherent right to use any and all words in the English language or any combination thereof for any legitimate purpose. Thus, it was correctly said by a learned judge that '* * * We can find no warrant in the books for considering a name, qua name, as property. No doubt 'property' is itself a conventional concept, but so are all legal concepts; this one has not as yet embraced names.' Learned Hand, J., in Mutual Life Ins. Co. v. Menin, 2 Cir., 115 F.2d 975, 979. See also, Slater v. Slater, 175 N.Y. 143, 67 N.E. 224, 61 L.R.A. 796; Falk v. American West Indies Trading Co., 180 N.Y. 445, 73 N.E. 239, 1 L.R.A.,N.S., 704.

Concededly, however, words of common speech, including commonplace expressions, may, by reason of their use and association with particular goods or with a particular business or enterprise, acquire a special significance with the general public or a segment thereof, namely, they may become generally known and referred to as the title or name for such goods, business or enterprise. This special significance acquired by a title or name is denominated in law as a 'secondary meaning' (see 1 Nims on Unfair Competition and Trade-Marks, Fourth Edition, Section 37); and where a title or name acquires a secondary meaning, the owner of the goods, business or enterprise labeled thereby, becomes possessed of legally enforceable rights.

Where goods, or a business or enterprise, has a title or name well established in the public mind, the owner has definite rights and remedies against another who unfairly uses such title or name in his business and thereby deceives or confuses the public. In such cases, the latter is held accountable on the theory that he has engaged in unfair competition, rather than on the theory that he has converted or appropriated to his use the property of the former. See, American Law Institute 'Restatement of the Law of Torts, Section 755 ²; United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141; Klein v. Lawson, Sup., 58 N.Y.S.2d 152, affirmed 269 App.Div. 935, 58 N.Y.S.2d 153. The rights of the owner of the goods, business or enterprise 'are not founded on a bare title to a word or symbol but on cause of action to prevent deception'. Du Pont Cellophane Co. v. Waxed Products Co., 2 Cir., 85 F.2d 75, 81. Thus, in Chadwick v. Covell, 151 Mass. 190, 193-194, 23 N.E. 1068, 1069, 6 L.R.A. 839, Mr. Justice Holmes said: 'When the...