Bevan v. Columbia Broadcasting System, Inc.

• Decision Date: 30 July 1971
• Docket Number: No. 67 Civ. 195.,67 Civ. 195.
• Citation: 329 F. Supp. 601
• Parties: Donald BEVAN and Edmund Trzcinski, Plaintiffs, v. COLUMBIA BROADCASTING SYSTEM, INC., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

329 F. Supp. 601

Donald BEVAN and Edmund Trzcinski, Plaintiffs, v. COLUMBIA BROADCASTING SYSTEM, INC., et al., Defendants.

No. 67 Civ. 195.

United States District Court, S. D. New York.

July 30, 1971.

Frances T. Wolff, Schwab & Goldberg, New York City, for plaintiffs.

Coudert Brothers, New York City, for defendants.

OPINION

TYLER, District Judge.

Pursuant to the Federal Copyright Act, 17 U.S.C. § 101 et seq., plaintiffs seek injunctive and monetary relief from the alleged infringement of their copyrighted play, "Stalag 17", by the TV series "Hogan's Heroes" of which defendants are producers and sponsors. In addition, plaintiffs seek relief under the common law of copyright, reserved by 17 U.S.C. § 2, based upon the alleged infringement of their unpublished "presentation" for a television series, also entitled "Stalag 17" (hereinafter "presentation"), and submitted to defendant Columbia Broadcasting System, Inc. ("CBS"). This latter claim is also styled by plaintiffs as a breach of implied contract. The court has jurisdiction over both claims pursuant to 28 U. S.C. § 1338(a) and (b). See discussion, Nimmer on Copyright (1963), § 131.12, at pp. 572.2-573, particularly n. 52¹ (hereinafter cited as "Nimmer").

Plaintiffs made a timely, albeit unusual, demand for jury trial, to which they were entitled since the complaint sought both legal and equitable relief. Arnstein v. Porter, 154 F.2d 464, 467 (2d Cir.1946); 5 Moore's Federal Practice § 38.26. The eight-day trial, which occurred between April 26 and May 6, 1971 was limited by agreement of counsel to the issue of liability. Approximately 2½ hours after being retired to deliberate, the jury returned a verdict in favor of plaintiffs against all four defendants on both the statutory and common law claims. Defendants' motions, timely made, for directed verdict and for judgment notwithstanding the verdict, were thereafter briefed and argued to the court on May 21, 1971.

This memorandum will treat three major issues raised by defendants' motions, specifically:

I. The sufficiency of the evidence supporting the jury verdict with respect to the play, Stalag 17.

II. The sufficiency of the evidence supporting the jury verdict with respect to the presentation; and

III. The standing of plaintiffs to maintain this action, in face of an assignment of "motion picture rights" in the play Stalag 17 to Paramount Pictures ("Paramount").

Several of these complex and difficult issues call to mind the now familiar statement of Judge Kaufman, writing for the panel in Shapiro, Bernstein & Co. v. H. L. Green Co., 316 F.2d 304, 305 (2d Cir.1963):

"This action for copyright infringement presents us with a picture all too familiar in copyright litigation; a legal problem vexing in its difficulty, a dearth of squarely applicable precedents, a business setting so common that the dearth of precedents seems inexplicable, and an almost complete absence of guidance from the terms of the Copyright Act. * * *"

Others raise the opposite problem of irreconcilable, ad hoc decisions, which are almost inevitable, given the vague contours of copyright protection. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, at 489 (2d Cir. 1960). Before turning to discussion of these complex and difficult issues, a summary of the evidence adduced at trial is in order.

Confined in a German prisoner of war camp during the second world war, plaintiffs began their collaboration which eventuated in the copyrighted play, Stalag 17, in 1951. The validity of their copyright is not contested. The play completed a widely publicized and acclaimed Broadway run and road tour. By a contract dated September, 1951, Paramount acquired the "motion picture rights" in the play, and produced thereafter the highly successful motion picture, also entitled Stalag 17.

Sometime in 1963, plaintiffs began work on a television series and prepared the presentation (plaintiffs' Exhibit 17) entitled Stalag 17. This presentation, which consists of a thematic outline of the proposed series, description of the characters, six brief narrative sketches and four story ideas was submitted to approximately one hundred firms or their representatives including CBS President James Aubrey at his New York office on July 1, 1964. A considerable time later, plaintiffs received a letter from another CBS official, Mr. White, expressing some interest in the ideas but indicating that CBS had no present or contemplated use therefor. That letter does not indicate whether the presentation was returned to plaintiffs, and no evidence as to its destiny within the CBS establishment was presented.

According to the proof adduced by defendants, the claimed infringing series "Hogan's Heroes" was developed from a pilot teleplay, entitled "The Informer", written by Albert Ruddy and Bernard Fein and submitted to CBS' west coast offices in mid-October, 1964. Having learned through an agent that CBS was interested in the pilot, defendant Bing Crosby Productions, Inc. ("BCP") contracted with the two writers to acquire all right and title to The Informer. Mr. Edward Feldman, an experienced writer, director and producer, was engaged by BCP to develop the series. Feldman brought in Richard Powell, also a well-known writer in the industry. Both men, particularly Powell, made substantial changes in the story line and characters of the pilot. Finally, in late-December, 1964, a revised draft of The Informer, was submitted to CBS and approved.

During this period a series of pre-production conferences concerning the pilot teleplay had been held on the west coast, at which were present Aubrey, Feldman and Powell, along with other CBS and BCP representatives, and Ruddy and Fein. In 1965, Feldman and Powell began production of the filmed series Hogan's Heroes. Scripts for further episodes were received from various industry writers and rewritten by Powell, who, according to Feldman, was the series' real creator. In September, 1965, The Informer, was broadcast, initiating one of the most successful prime time network series.

At trial, the jury was afforded time to read the actor's edition of the play Stalag 17, as well as plaintiffs' presentation of the same name. In addition, and over defense objection, the jury was shown the later movie, Stalag 17, which contains most of the essential elements of the play plus supplementary material necessitated by the adaptation to the film media.² The jury was also shown the film of The Informer, the pilot teleplay of Hogan's Heroes. Although most of the scripts and many of the films of subsequent episodes of Hogan's Heroes were also in evidence, the jury's consideration of the series as a whole was limited to what they could glean from the CBS Production Fact Book, and the comparative testimony, respecting both the play and the presentation, of literary experts, Professor Maurice Valency of Columbia for the plaintiffs, and William Talbot, an editor and publisher, for defendants. Ruddy, Fein and Feldman testified to the origin and development of the television series.

I.

It has long been the rule that in order to succeed in an action on the theory of copyright infringement, plaintiffs must prove (1) that defendants copied from their works and (2) that such copying worked an unlawful appropriation of at least a substantial, protected part of the allegedly infringed work. Arnstein v. Porter, supra,³ 154 F.2d at 468. Plaintiffs sought to prove copying, as is most frequent, by circumstantial evidence, i.e. by showing that the defendants had access to plaintiffs copyrighted work and that the two works are substantially similar.

To establish access, a plaintiff need show no more than that defendant had a reasonable opportunity to view or read plaintiff's work. Blazon, Inc. v. Deluxe Game Corp., 268 F.Supp. 416, 422 (S.D.N.Y.1965); Smith v. Little Brown & Co., 245 F.Supp. 451 (S.D.N. Y.1965), affirmed 360 F.2d 928 (2d Cir. 1966). Here plaintiffs' proof of the extensive popularity of and notoriety surrounding both the original play Stalag 17 and the movie based thereon was sufficient to support the jury's apparent finding that persons involved in the production of Hogan's Heroes had knowledge of the copyrighted work, and the jury was entitled to disbelieve their denials.

It is with respect to the element of substantial similarity that I am constrained to hold the jury's verdict lacking sufficient basis in fact.

Although the question of substantial similarity is predominantly one of fact, it cannot be decided without reference to the scope of protection conferred by the copyright. Copyright law treads a difficult and often tenuous line between encouragement and discouragement of expression. Lord Mansfield stated the problem of reconciling two socially useful but antithetical interests in Sayre v. Moore, 102 Eng.Rep. 139, 140 (1785).

"We must take care to guard against two extremes equally prejudicial; the one that men of ability, who have employed their time for the service of the community may not be deprived of their just merits and reward for their ingenuity and labor; the other that the world may not be deprived of improvements nor the progress of the arts be retarded."

To this end, the copyright endows an author with a quasi-monopoly power to exploit his or her work, limited, however, so as not to foreclose others from entering the same field and treating, as here, the same subject matter. Substantial similarity, therefore, is to be judged by comparison not of general ideas but of that which constitutes the author's "expression". This distinction was captured by Judge Learned Hand in his well-known "abstractions test", see Nichols v. Universal Pictures Corp., Inc., 45 F.2d 119 at 121 (2d Cir.1930), and further elaborated in the equally famous "pattern test" of Professor Zechariah Chafee, see Chafee, "Reflections on the Law of Copyright", 45 Col.L.R. 503, 513 (1945). The determination of substantial similarity involves, in...