Cleary v. News Corp.
| Decision Date | 01 August 1994 |
| Docket Number | No. 92-55697,92-55697 |
| Parties | , 22 Media L. Rep. 2076 James W. CLEARY, Plaintiff-Appellant, v. NEWS CORPORATION and HarperCollins Publishers, Inc., Defendants-Appellees. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Joseph E. Mueth, Los Angeles, CA, for plaintiff-appellant.
Louis P. Petrich, Leopold, Petrich & Smith, Los Angeles, CA, and Slade R. Metcalf, Squadron, Ellenoff, Plesent & Lehrer, New York City, for defendants-appellees.
Appeal from the United States District Court for the Central District of California.
Before: FLETCHER and D.W. NELSON, Circuit Judges, and WILL, * Senior District Judge.
Opinion by Senior District Judge WILL.
Dr. James W. Cleary sued News Corporation, the publishers of Robert's Rules of Order, under the Lanham Act, 15 U.S.C. Sec. 1125, for alleged misattribution of his work product. He also brought state law claims for unfair competition, breach of contract, and intentional or negligent infliction of emotional distress. The district court granted summary judgment in favor of the defendants on all counts. The district court had jurisdiction over Cleary's Lanham Act claim under 15 U.S.C. Sec. 1121, and over the state law claims under the doctrine of supplemental jurisdiction, as well as diversity of citizenship. Cleary timely appealed the grant of summary judgment. We have jurisdiction under 28 U.S.C. Sec. 1291. For the following reasons, we affirm.
During the 1960s, James W. Cleary helped revise Robert's Rules of Order for Scott, Foresman and Company. 1 When the 1970 edition was published, Dr. Cleary was listed on the title page as having assisted the named author, Sarah Corbin Robert, along with Henry M. Robert III and William J. Evans. The work was republished in 1980 and once again title page credit was given to Cleary, Robert III, and Evans. The most Many of the facts underlying this litigation are undisputed. Currently in its ninth edition, Robert's Rules of Order is one of the leading sources of parliamentary law in the United States. Robert's Rules was first published in 1876 by General Henry Martyn Robert; he has been listed as the author of every edition of Robert's Rules since. After General Robert's death, members of the Robert family maintained ultimate authority over any changes. Robert's Rules Association, successor-in-interest to General Robert's rights, owns the copyright to each edition.
recent edition was published in 1990. The title page for this edition was virtually identical to the 1970 and 1980 versions with the most notable change being the omission of Dr. Cleary's name. Upon learning of the omission, Dr. Cleary initiated this lawsuit. The district court subsequently granted the defendant's motion for summary judgment on all counts.
In 1960, Sarah Corbin Robert, General Robert's daughter-in-law, began working on what was to become the 1970 edition of Robert's Rules. Sarah Robert's son, Henry M. Robert III, and William J. Evans became involved in the writing and editing of the 1970 edition. In 1961, Dr. James W. Cleary was retained by Scott, Foresman to provide a critique of the previous edition of Robert's Rules, and in 1965, Cleary was retained as Advisory Editor to the revision.
Curtis Johnson, an employee of Scott, Foresman, testified at his deposition that prior to entering into the contract, Scott, Foresman had orally agreed to give title credit to Cleary. Johnson stated that, in light of the low royalty rate, "[r]ight from the start [name credit] was the inducement that was supposed to persuade Dr. Cleary to do the work." Excerpt of Record ("E.R."), ex. K at 12. Johnson also testified that, in fact, he did offer Cleary title credit. Most relevant to this appeal is a letter dated May 19, 1965, and addressed to Cleary, in which Johnson discusses the proposed royalty terms at some length and concludes, "[W]e will, of course, appropriately credit you in the new edition, as well." E.R., ex. K at 107.
Subsequently, however, on September 3, 1965, Cleary entered into an agreement with Scott, Foresman concerning his role in the revision. Cleary agreed to validate the then-existing copy for the 1970 edition, to compile and complete copy for three chapters, and to write new copy for two chapters. In return, Scott, Foresman agreed to pay Cleary a royalty of three-quarters of one percent of the net receipts from sales of the 1970 edition, with Scott, Foresman reserving the right to adjust the royalty rate with respect to future editions of the book to reflect the amount of original work prepared by Cleary that remained in any subsequent edition. The contract specified that Cleary was retained on a work for hire basis and that the heirs of General Robert would retain all rights in Robert's Rules and in the copyright. The contract did not mention giving Cleary any title credit for the 1970 edition or any subsequent editions.
Cleary began working on the revision. According to Cleary, Sarah Robert had completed a mere outline of the work and Robert III was not producing usable material. Therefore, Cleary wrote a large amount of the new edition, which was subsequently edited by Sarah Robert and, because of her rapidly declining health, by Robert III. Cleary testified that he had contributed approximately forty percent of the final edition, Robert III had contributed forty percent, and Evans had contributed twenty percent.
In 1980, Scott, Foresman published a new edition, with minor revisions. Scott, Foresman provided Cleary with an opportunity to review the changes; none of Cleary's proposed changes were incorporated into the new edition. Cleary continued to receive title credit and three-quarters of one percent royalties for sales of the 1980 edition.
The most recent edition, referred to as the 1990 edition, was published in late 1989. It is undisputed that Cleary did not participate in the preparation of the 1990 edition. After the 1990 edition was published, Cleary learned that his name had been deleted from the title page, although he was still acknowledged in the introduction. Sarah Corbin Robert was still listed as the author, although she had died in 1972, and Robert III The parties' primary factual disagreement focuses on the extent of the revisions in the 1990 edition. The new edition was printed in a larger print type, which changed the pagination. Cleary insists that any other changes were minor. In evidence is a list of "buzz words" with special significance only to Cleary, that have remained in virtually identical places in the book. E.R., ex. C. In his declaration in opposition to summary judgment, Cleary acknowledged that reviewers of the 1990 edition listed "14 important areas of revision" between the 1970 and 1990 editions. However, he asserts that these changes consist merely of additional words, sentences or paragraphs; other than these few changes, he claims the text is essentially the same as the 1970 version. Scott, Foresman, on the other hand, insists that the 1990 edition is a major revision, and that the entire revision was prepared by Robert III and Evans.
and Evans were listed as providing assistance.
In evidence are two reviews of the 1990 edition, both published in Parliamentary Journal. E.R., ex. D and E. The reviewers each characterize the new edition as a book-selling strategy, but discuss new and substantial changes in the edition. Also included in evidence is a list of changes compiled by the Registered Parliamentarian of Southern California. E.R., ex. F. This list, covering approximately the first half of the 1990 edition, records each of 73 changes made since the 1980 edition.
Dr. Cleary has continued to receive three-quarters of one percent royalties on sales of the 1990 edition. As part of an attempted settlement of this case, the title page of subsequent printings of the 1990 edition after the first printing listed Cleary as providing assistance just as in the 1980 version.
The standard of review of a grant of summary judgment is de novo. See Kruso v. International Tel. & Tel. Corp., 872 F.2d 1416, 1421 (9th Cir.1989), cert. denied, 496 U.S. 937, 110 S.Ct. 3217, 110 L.Ed.2d 664 (1990). Summary judgment may be granted when, viewing the evidence in the light most favorable to the non-moving party, no genuine issues of fact remain and the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 2509-10, 91 L.Ed.2d 202 (1986). Summary judgment must be entered against a party who fails to present evidence sufficient to establish an essential element of that party's case. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986).
Section 43(a) of the Lanham Act prohibits the use of false designations of origin and false representations in the advertising and sale of goods and services. Smith v. Montoro, 648 F.2d 602, 603 (9th Cir.1981). 2 Cleary argues that the defendants violated Sec. 43(a) when they removed his name from the title page of Robert's Rules, after crediting him for twenty years.
Scott, Foresman argues that because Cleary signed a contract containing a "work for hire" agreement, Scott, Foresman had no obligation to provide title credit in the 1970 edition, or any subsequent edition. Under copyright law, a work for hire clause vests all authorship rights in the employer. 17 U.S.C. Sec. 201(b). 3 Consequently, because the employer Cleary's contract with Scott, Foresman contained an explicit "work for hire" clause and did not mention giving Cleary title credit. Moreover, as will be discussed in Part C, infra, the parol evidence rule bars Cleary's attempt to introduce an attribution clause into the contract. Thus, when Cleary agreed to "work for hire," Scott, Foresman became the author of all material written by Cleary...
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