Chamberlain v. Columbia Pictures Corp.

• Decision Date: 18 January 1951
• Docket Number: No. 12554.,12554.
• Citation: 186 F.2d 923
• Parties: CHAMBERLAIN et al. v. COLUMBIA PICTURES CORP.
• Court: U.S. Court of Appeals — Ninth Circuit

186 F.2d 923 (1951)

CHAMBERLAIN et al. v. COLUMBIA PICTURES CORP.

No. 12554.

United States Court of Appeals Ninth Circuit.

January 18, 1951.

Harry E. Sokolov, Los Angeles, Cal., for appellant.

Mitchell, Silberberg & Knupp and Leonard A. Kaufman, all of Los Angeles, Cal., for appellee.

Before STEPHENS, BONE and ORR, Circuit Judges.

ORR, Circuit Judge.

The District Court dismissed appellants' complaint on the ground that it did not state a cause of action. Appellants attempted to allege a cause of action for unfair competition and a violation of a trademark. The complaint alleged in substance that appellants Chamberlain and Central Hanover Bank Company are the trustees of the estate of the late Samuel L. Clemens (Mark Twain); that Mark Twain Company is a corporation organized by Samuel L. Clemens during his lifetime for the purpose of engaging in the business of exploiting and publishing the literary property written by him and for the purpose of development of the name "Mark Twain;" Clara Clemens Samossoud is the sole heir of Samuel L. Clemens, deceased. It is alleged that appellants claim all rights possessed by Clemens at the time of his death in literary property, including the copyright to most of Clemens' works; that the name "Mark Twain" was used by Clemens to designate himself as the author of his works; that the name acquired considerable popularity because of the excellent quality of the works to which it was attached; that appellants are deriving income from exploiting, publishing, selling and licensing "Mark Twain" works. It is further alleged that the name "Mark Twain" has been registered under the federal trade-mark law and under the trade-mark laws of the various states, and has been licensed by appellants for use in connection with literary products and for commercial purposes in connection with non-literary products. The complaint further alleges that appellee has been exhibiting throughout the United States a motion picture produced by defendant entitled "Best Man Wins," and advertising this picture in such a way as to give the impression that Samuel L. Clemens wrote the story, in that appellee's advertisements say their picture is "A Story only Mark Twain Could Tell," "Mark Twain's Favorite Story," "Mark Twain's Tale of a Gamble in Hearts," and other similar statements. It is alleged that Clemens never wrote a story entitled "Best Man Wins," and that the motion picture bears only slight resemblance to the Mark Twain short story, "The Celebrated Jumping Frog of Calaveras County." It is further alleged that the picture "Best Man Wins" is "an inferior motion picture photoplay," which "tells a very common, ordinary and what is commonly characterized in the motion picture theatrical industry as a `corny' love story." Further, it is alleged, that the quality of this picture, coupled with the representation that the story was written by Clemens, has depreciated the value of those literary works of Mark Twain which are protected by copyright and of the trade name "Mark Twain," in connection with its use in other commercial enterprises. (Since the "Jumping Frog" is in the public domain there is no claim of copyright infringement.)

The prayer of the complaint is for an injunction against further misleading advertisements, an accounting of the gross receipts in connection with the motion picture, damages and other appropriate relief.

The District Court concluded that inasmuch as the story "Jumping Frog of Calaveras County" was in the public domain and that there is also, in the public domain, other historic material with the name "Mark Twain" which belongs to everybody and since there exists no exclusive right to the use of the name "Mark Twain" there was no unfair competition in what appellee did.

The cause of action attempted to be set forth in the amended complaint is not bottomed on a claim of exclusive use or validity of trade-mark. Prior to the Lanham Act of 1946, 15 U.S.C.A. § 1051 et seq., appellants' claim arising out of the allegedly valid registration of a trade-mark under the Federal Trade-Mark Law would have been significant in determining the jurisdiction of the federal court but would not have given rise to a separate "cause of action." Cf. Hurn v. Oursler, 1933, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148. Various provisions of the Lanham Act now give protection under federal law regardless of the registration under federal law of the trade name concerned, provided the unfair competition takes place in interstate commerce. See, Stauffer v. Exley, 9 Cir., 1950, 184 F. 2d 962. The merit of the attempted statement of a cause of action in the amended complaint, if any, must be found in its relation to the remedies conferred under § 1125, T. 15 U.S.C.A., that being the section appellants are attempting to invoke. Said section, as it applies here, provides that any person "who shall * * * use in connection with any goods or services * * * a false designation of origin, or any false description or representation, including words * * * tending falsely to describe or...