Columbia Broadcasting System, Inc. v. DeCosta, 6769-6771.

• Decision Date: 11 May 1967
• Docket Number: No. 6769-6771.,6769-6771.
• Citation: 377 F.2d 315
• Parties: COLUMBIA BROADCASTING SYSTEM, INC., Defendant, Appellant, v. Victor DeCOSTA, Plaintiff, Appellee. CAPITAL CITIES BROADCASTING CORPORATION v. Victor DeCOSTA. C B S FILMS INC. v. Victor DeCOSTA.
• Court: U.S. Court of Appeals — First Circuit

377 F.2d 315 (1967)

COLUMBIA BROADCASTING SYSTEM, INC., Defendant, Appellant, v. Victor DeCOSTA, Plaintiff, Appellee.

CAPITAL CITIES BROADCASTING CORPORATION v. Victor DeCOSTA.

C B S FILMS INC. v. Victor DeCOSTA.

Nos. 6769-6771.

United States Court of Appeals First Circuit.

May 11, 1967.

Knight Edwards, Providence, R. I., with whom Ronald R. Lagueux, Providence, R. I., Carleton G. Eldridge, Jr., Eugene L. Girden, New York City, Edwards & Angell, Providence, R. I., and Coudert Brothers, New York City, were on brief, for appellants.

Leonard Decof, Providence, R. I., with whom Alan T. Dworkin and Aisenberg, Decof & Dworkin, Providence, R. I., were on brief, for appellee.

Before ALDRICH, Chief Judge, McENTEE and COFFIN, Circuit Judges.

COFFIN, Circuit Judge.

This is an appeal by defendants¹ from jury verdicts in the total amount of $150,000 awarded plaintiff on his claim that he created, and the defendants mis-appropriated, the character of Paladin, the protagonist of the CBS television series entitled "Have Gun Will Travel".

The story of this case — more bizarre than most television serial installments — is one of "coincidence" run riot. The plaintiff, of Portuguese parents, is a Rhode Island mechanic whose formal education ceased after the fourth grade. During the Depression, having tired of factory work, he hopped a freight for the West, lived in hobo jungles, and eventually became a range hand on a Texas ranch. After two years of riding and roping he returned to Rhode Island to work as a mechanic and later received training as a motor machinist in the Coast Guard. But he retained his passion for all things western. In 1947 he began to participate in rodeos, horse shows, horse auctions, and parades.

From the beginning plaintiff indulged a penchant for costume. He was already equipped with a moustache. He soon settled on a black shirt, black pants, and a flat-crowned black hat. He had acquired a St. Mary's medal at a parade and affixed this to his hat. He adopted the name Paladin after an onlooker of Italian descent had hurled an epithet at him containing the word "Paladino". On looking up the word Paladin in a dictionary he found it meant "champion of Knights" and was content that people began so to call him.² One day when he had donned his costume in preparation for a horse show, and was about to mount his horse, one of a group waiting for him shouted "Have Gun Will Travel", a cry immediately picked up by the children present.

The finishing touches were a chess knight, bought for fifteen cents at an auction, which plaintiff thought was a good symbol, and which he used on a business card along with the words "Have", "Gun", "Will", "Travel", and "Wire Paladin, N. Court St., Cranston, R. I.", hand-printed with separate rubber stamps; a silver copy of the chess piece on his holster; and an antique derringer strapped under his arm. So accoutered, he would appear in parades, the openings and finales of rodeos, auctions, horse shows, and a pony ring he once operated. From time to time at rodeos he would stage a western gunfight, featuring his quick draw and the timely use of his hidden derringer. He would pass out photographs of himself and cards — printed versions soon replacing the rubber-stamped ones. Hospitals, drug stores, barber shops, sports shops, diners — all were the repositories of his cards, some 250,000 of them. Children clamored for the cards, and clustered about him to the extent that he was likened to the Pied Piper and Gene Autry. This was perhaps one of the purest promotions ever staged, for plaintiff did not seek anything but the entertainment of others. He sold no product, services, or institution, charged no fees, and exploited only himself.

Ten years after he had begun to live his avocational role of Paladin, he and his friends saw the first CBS television production of "Have Gun Will Travel", starring moustachioed Richard Boone, who played the part of an elegant knight errant of the Old West, always on the side of Good — for a fee. The television Paladin also wore a black costume, a flat-crowned black hat bearing an oval silver decoration, and a silver chess knight on his holster, and announced himself with a card featuring a chess piece virtually — if not absolutely — identical with the plaintiff's and the words "HAVE GUN WILL TRAVEL, WIRE PALADIN, SAN FRANCISCO". The series was notably successful; it appeared in 225 first-run episodes in the United States, was licensed in foreign countries, and by the time of trial had grossed in excess of fourteen million dollars.

The writers and network executives responsible for the series testified in detail that the television Paladin was a spontaneous creation, developed in total ignorance of the attributes of his Rhode Island predecessor. The writers, Herb Meadow and Sam Rolfe, testified that the germ of the idea was the title, "Have Gun Will Travel", which Meadow had evolved from mulling over a familiar theatrical advertising phrase, "Have tux, will travel". The character was originally conceived as a denizen of contemporary New York, but was changed to a western hero because the network hoped to cast Randolph Scott in the role. The name "Paladin" resulted from a thesaurus search for words meaning "knight" or "hero" or "champion". The chess piece symbol was inspired by Meadow's observation, while teaching his son the game, that the knight's movements were uniquely erratic and unpredictable. In the pilot script for the series, Paladin used a hidden derringer because it was a convenient way to extricate him from the obligatory dangerous situation.

The show's original producer, Julian Claman, testified that after Randolph Scott and other "fairly well known" actors were found to be unavailable he selected Richard Boone to be tested for the role of Paladin. Boone appeared for the test with a moustache, for reasons unknown, and was outfitted in a black suit because it was the only available costume that fitted. The hat, bearing a silver "conche", was selected by Claman because it looked appropriate. The card, which had been described in Meadow and Rolfe's original prospectus, was realized by the CBS art department from a rough sketch by Claman. The "shocking similarity" to DeCosta's cards was pure coincidence. Boone's test was successful, and Claman, reluctant to change any element of a winning combination, decided to keep card, costume, and moustache intact for the pilot film. He also decided to add the silver chess knight to Paladin's holster because it produced a distinct article that would be marketable if the series succeeded.

Meadow, Rolfe, Claman, and the other witnesses for the defendants all testified that they had never seen DeCosta or any of his cards. The jury obviously disbelieved at least this much of their testimony, and we think it clear that they were amply justified. Thus, the plaintiff has had the satisfaction of proving the defendants pirates. But we are drawn to conclude that that proof alone is not enough to entitle him to a share of the plunder. Our Paladin is not the first creator to see the fruits of his creation harvested by another, without effective remedy; and although his case is undeniably hard, to affirm the judgments below would, we think, allow a hard case to make some intolerably bad law.

In the first place, it is by no means clear that such state law of intellectual property as we have found supports relief on these facts.³ Several cases have been cited around the general proposition that it is an actionable wrong to appropriate and exploit the product of another's creative effort; but all seem to involve distinguishable wrongs of at least equal or even superior significance. Most rest on the tort of "passing off": appropriation not of the creation but of the value attached to it by public association (the so-called "secondary meaning"), by misleading the public into thinking that the defendant's offering is the product of the plaintiff's established skill. E. g., Lone Ranger, Inc. v. Cox, 4 Cir., 1942, 124 F.2d 650; Chaplin v. Amador, 1928, 93 Cal.App. 358, 269 P. 544.⁴ Others add an element of injury to reputation caused by a poor imitation. E. g., Lahr v. Adell Chem. Co., 1 Cir., 1962, 300 F.2d 256. And at least one combined both of these with an element of injury to a valuable contract to assert "the broader principle that property rights of commercial value are to be and will be protected from any form of unfair invasion or infringement and from any form of commercial immorality * * *." Metropolitan Opera Ass'n v. Wagner-Nichols Recorder Corp., Sup.Ct.1950, 199 Misc. 786, 793, 101 N.Y.S.2d 483, 492.

Plaintiff argues that he has established "secondary meaning" through testimony of some witnesses that they thought he was the Paladin on television and evidence that most people knew him only as Paladin, not as Victor DeCosta. Whether or not this assertion is true, it is here irrelevant, for the issue was not submitted to the jury. The complaint alleged three causes of action: misappropriation, trade and/or service mark infringement, and unfair competition by "passing off" the television Paladin as the plaintiff. Only the first was tried, the court reserving judgment on defendant's motions to dismiss the other two. The jury was instructed that the plaintiff would be entitled to the verdict if he established:

"First. That he conceived and created said idea and character of `Paladin, Have Gun Will Travel\'; and that said idea and character was novel, original, and unique; and that he did not at any time abandon said idea and character by a publication thereof.

"Second. That the defendants * * * did copy said idea and character without the permission of the plaintiff and used them in the television series, `Have Gun Will Travel.\'

And

"Third. That the plaintiff sustained damages as a result of such copying and use of said idea and character. * * *"

Thus, the judgment can only be supported on a rule of...