Bourne Co. v. Tower Records, Inc., 2143
| Decision Date | 29 September 1992 |
| Docket Number | D,No. 2143,2143 |
| Citation | 976 F.2d 99 |
| Parties | 1992 Copr.L.Dec. P 26,999, 24 U.S.P.Q.2d 1309 BOURNE CO., Plaintiff-Appellee, v. TOWER RECORDS, INC., Barnes & Noble Bookstores Inc., Record Explosion, Inc., Blockbuster Entertainment Corp., RKO Warner Video, Inc., Does # 1-# 100, Defendants, The Walt Disney Company and Buena Vista Home Video, Defendants-Appellants. ocket 92-7701. |
| Court | U.S. Court of Appeals — Second Circuit |
Sanford M. Litvack, The Walt Disney Co. (Peter Herbert, Richard S. Mandel, Alasdair J. McMullan, Cowan, Liebowitz & Latman, New York City, of counsel), for defendants-appellants.
Jay Gordon, New York City (Janet P. Kane, Theodore C. Max, Robert N. Fass, Shelley Moroff, Phillips, Nizer, Benjamin, Krim & Ballon, of counsel), for plaintiff-appellee.
Before WINTER, MINER and McLAUGHLIN, Circuit Judges.
Walt Disney Company ("Disney") and Buena Vista Home Video appeal from a preliminary injunction issued by Judge Stanton, barring their use of songs from the movie "Pinocchio" ("the songs") on videocassette trailer advertisements. Because the district court gave insufficient weight to Bourne Co.'s delay in seeking relief and mistakenly considered the challenged use "new", we reverse.
In 1939, Disney entered into an agreement with Bourne, in which it assigned to Bourne copyrights to the songs from the movie "Pinocchio", including the famous "When You Wish Upon A Star" ("Wish Upon A Star"). The parties disagree about the effect of this agreement. Disney claims the agreement gave Bourne only the right to collect licensing fees from third parties and to keep fifty percent of the fees received, leaving Disney free to use the songs for its own purposes. Bourne claims that Disney ceded all rights to the songs, except for the right to employ them in public performances of motion pictures.
Whatever the meaning of the contract, Disney exercised for decades its claimed rights without protest by Bourne. Beginning in 1954, Wish Upon A Star opened and closed Disney's weekly television series. Both Wish Upon A Star and the series were used to promote Disneyland. In addition, Disney's national advertising campaign featured Wish Upon A Star. Disney's uses of the songs kept pace with technological development. When home movie projectors became popular, the songs accompanied reel-to-reel movies sold solely for home use. When video-technology developed, Disney employed the new technology in distributing the movie "Pinocchio" for home viewing in at least twenty-three countries. It has also used the songs on a wide variety of videocassettes. In sum, the songs have been used for decades in a wide variety of media in ways that are inconsistent with Bourne's view of its agreement with Disney.
After decades of Disney's use of the songs for purposes other than the public performances of motion pictures, Bourne first objected in 1981. Disney rejected Bourne's claims. Bourne was silent until 1986 when it objected again. Disney again rejected Bourne's claims. Finally, in January 1991, Bourne commenced the instant action. Subsequently, Euro Disney S.A. ("EDSA") (a Disney subsidiary that manages Euro Disney) requested licenses from Bourne, intending to promote Euro Disney with Wish Upon A Star. One of the proposed promotions was a videocassette advertising trailer using Wish Upon A Star. Disney claims that the requests were a mistake and that it continued to negotiate for the licenses solely to avoid litigation that might interfere with the scheduled opening of Euro Disney. Eventually, EDSA withdrew its request but agreed to obtain licenses for the other proposed promotions. These events evidently prompted Bourne to seek the preliminary injunction barring the use of Wish Upon A Star and the songs on videocassette advertisements that is the subject of this appeal.
Judge Stanton granted Bourne's request, ruling that videocassette trailers were a new use of the songs to which Bourne had promptly objected. In his view, this prompt objection established a presumption of irreparable harm for the new infringement. This appeal followed.
As the district court noted:
[A] preliminary injunction may be granted only upon a showing of "(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting [the preliminary] relief."
Bourne v. The Walt Disney Company, 1992 WL 170686, at *2, 1992 U.S.Dist. LEXIS 9853, at * 6 (S.D.N.Y. July 1, 1992) (quoting Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir.1985)). Bourne has failed as a matter of law to demonstrate irreparable harm. This is a case in which the actions of the parties speak louder than the after-the-fact arguments of their lawyers. The best evidence of the lack of urgency in Bourne's need for preliminary relief is its own course of conduct in failing to object for several decades to pervasive violations of what it now claims are its contractual rights. Faced with this record of inaction, we will not now presume that Disney's present actions threaten severe, much less irreparable, harm.
To be sure, irreparable harm is presumed when plaintiff establishes a prima facie case of copyright infringement. See, e.g., Video Trip Corp. v. Lightning Video, Inc., 866 F.2d 50, 51-52 (2d Cir.1989). However, it is equally settled that a party's delay in the enforcement of copyrights rebuts that presumption. For example, in Citibank, N.A. v. Citytrust, 756 F.2d 273 (2d Cir.1985), we held that the presumption of irreparable harm did not survive even a ten-week...
To continue reading
Request your trial
-
Ramsey v. Goord
... ... Liberty Lobby, Inc., 477 U.S. 242, 250-51, 106 S.Ct. 2505, 91 L.Ed.2d 265 ... ...
-
US v. LOCAL 6A, 86 Civ. 4819 (VLB).
...is not applicable here because no prejudice has been shown to have been brought about by the delay. See generally Bourne Co. v. Tower Records, 976 F.2d 99 (2d Cir.1992). ...
-
HUDSON VALLEY DIST. COUNCIL v. UW Marx, Inc.
...in which these damages accumulated might constitute laches barring recovery claimed at a later date. See generally Bourne Co. v. Tower Records, 976 F.2d 99 (2d Cir.1992); Daingerfield Island Protective Soc'y v. Lujan, 920 F.2d 32 (D.C.Cir.1990) (R. Ginsburg, J.), cert. denied ___ U.S. ___, ......
-
Salinger v. Colting
...Richard Feiner, 98 F.3d at 34; Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 124 (2d Cir.1994); Bourne Co. v. Tower Records, Inc., 976 F.2d 99, 101 (2d Cir.1992). Under any of these articulations, however, this Court has nearly always issued injunctions in copyright cases as ......
-
WITHHOLDING INJUNCTIONS IN COPYRIGHT CASES: IMPACTS OF EBAY.
...at 524-25. (23.) See infra Part LA. (24.) See infra Part LB. (25.) See infra Part I.D. (26.) See, e.g., Bourne Co. v. Tower Recs., Inc., 976 F.2d 99, 101 (2d Cir. 1992) (denying preliminary injunction for use of song in videocassette trailer because of delay), aff'd sub nom. Bourne v. Walt ......
-
Don't put my article online!: Extending copyright's new-use doctrine to the electronic publishing media and beyond.
...was not invented when the parties signed their agreement, that use is not permitted under the contract"), rev'd on other grounds, 976 F.2d 99 (2d Cir. 1992); see also Nagano, supra note 58, at 1185 (calling for "judicial balancing of the parties' equities" to resolve and allocate "potential......