Conan Properties, Inc. v. Mattel, Inc., 84 Civ. 5799 (RPP).

• Citation: 712 F. Supp. 353
• Decision Date: 19 April 1989
• Docket Number: No. 84 Civ. 5799 (RPP).,84 Civ. 5799 (RPP).
• Parties: CONAN PROPERTIES, INC., Plaintiff, v. MATTEL, INC., Defendant. MATTEL, INC., Counterclaim Plaintiff, v. CONAN PROPERTIES, INC., Merchandise Development Corp., Conan Merchandising Corp., University Patents, Inc., Conan Licensing Co., and Summit Licensing Co., Counterclaim Defendants.
• Court: U.S. District Court — Southern District of New York

712 F. Supp. 353

CONAN PROPERTIES, INC., Plaintiff, v. MATTEL, INC., Defendant.

MATTEL, INC., Counterclaim Plaintiff, v. CONAN PROPERTIES, INC., Merchandise Development Corp., Conan Merchandising Corp., University Patents, Inc., Conan Licensing Co., and Summit Licensing Co., Counterclaim Defendants.

No. 84 Civ. 5799 (RPP).

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

April 19, 1989.

COPYRIGHT MATERIAL OMITTED

Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York City by James Rhodes, Jr. (Stephen B. Judlowe and Michael F. Hurley, on the briefs), for plaintiff and counterclaim defendants.

Welsh & Katz, Chicago, Ill. by Eric C. Cohen (A. Sidney Katz and Suzanne Hines, on the briefs), and Fulbright Jaworski & Reavis McGrath, New York City by Ralph C. Dawson, for defendant and counterclaim plaintiff.

OPINION AND ORDER

ROBERT P. PATTERSON, Jr., District Judge.

This lawsuit pits Conan of Cimmeria, the Barbarian, against He-Man of Eternia, a Master of the Universe, two warriors who have been fighting for five years on anomalous terrain: the courtroom, instead of the battlefield. In 1984, Conan Properties, Inc. sued Mattel, Inc., alleging copyright infringement, trademark infringement, unfair competition, dilution, breach of contract, and fraud.¹ Mattel then counterclaimed against Conan Properties, Inc., its affiliates, and their subsidiaries² (collectively, "CPI") for fraud.³ Mattel has now moved for summary judgment on all the claims raised by CPI, and CPI has moved for summary judgment on the count raised by Mattel. See Fed.R.Civ.P. 56. For the reasons following, the Court grants Mattel summary judgment on CPI's copyright, trademark, unfair competition, and dilution claims, and denies Mattel summary judgment on CPI's breach of contract and fraud claims. The Court denies CPI summary judgment on Mattel's fraud claim. This opinion begins by discussing summary judgment in general, and goes on to consider each issue in turn.

I. Summary Judgment

In 1986, the United States Supreme Court reminded the federal district courts that "summary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed `to secure the just, speedy and inexpensive determination of every action.'" Celotex Corp. v. Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 2555, 91 L.Ed.2d 265 (1986) (quoting Fed.R.Civ.P. 1). Soon thereafter, however, the Second Circuit counseled prudence. Summary judgment, the Second Circuit stressed, should not be "granted improvidently." Donahue v. Windsor Bd. of Fire Comm'rs, 834 F.2d 54, 57 (2d Cir.1987); see also Ramseur v. Chase Manhattan Bank, 865 F.2d 460 (2d Cir.1989); Arthur Glick Truck Sales, Inc. v. General Motors Corp., 865 F.2d 494 (2d Cir.1989). Mindful of the cautious course a district judge must chart, this Court begins by reviewing the governing principles of law. See Ramseur, supra, 865 F.2d at 464-65.

Rule 56 of the Federal Rules of Civil Procedure provides that summary judgment

shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, if any, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law....

. . . . .

When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleadings, but the adverse party's response ... must set forth specific facts showing that there is a genuine issue for trial....

Fed.R.Civ.P. 56(c), 56(e). The Second Circuit has emphasized that summary judgment is meant to clear the air before trial and thereby enable a district judge to see whether any fire of substance flickers beneath the parties' smoke. See Donahue, supra, 834 F.2d at 57. In general, then, when properly applied, "summary judgment allows the court to dispose of meritless claims before becoming entrenched in a frivolous and costly trial." Id. at 58.

More specifically, a party moving for summary judgment need not offer affirmative evidence that negates her adversary's proof, so long as the nonmovant bears the ultimate burden of persuasion at trial; instead, the movant properly supports her motion for summary judgment when she "`shows'—that is, ... points out to the district court—that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett, supra, 477 U.S. at 325, 106 S.Ct. at 2554. By the time of the motion the nonmovant has ordinarily finished gathering the evidence upon which she plans to rely at trial or has had more than adequate opportunity to do so.⁴ For the case to proceed to trial there must be a genuine issue of material fact on each element of the nonmovant's claim. A fact is "material" when it "might affect the outcome of the suit under the governing law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). An issue is "genuine" when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. The court must "resolve all ambiguities and draw all reasonable inferences against the moving party." Donahue, supra, 834 F.2d at 57. Furthermore, because the standard for entry of summary judgment "mirrors the standard for a directed verdict" under Fed. R.Civ.P. 50(a), Liberty Lobby, supra, 477 U.S. at 250, 106 S.Ct. at 2511, a district court considering a summary judgment motion must apply the substantive measure of proof that would be implicated at trial. See id. at 252-56, 106 S.Ct. at 2512-14. In short, "there is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Id. at 249, 106 S.Ct. at 2510; see also Dister v. Continental Group, Inc., 859 F.2d 1108, 1114 (2d Cir.1988).

II. Copyright Infringement

This story really begins in the early 1930s, when a visionary named Robert E. Howard transcribed the exploits of Conan of Cimmeria. Warrior scion of a "barbarian blacksmith," Conan lives in the "Hyborian Age, between the sinking of Atlantis and the beginnings of recorded history." Deposition of L. Sprague de Camp at 17 (Dec. 3, 1985). In the words of a contemporaneous work, "The Nemedian Chronicles":

Know, O prince, that between the years when the oceans drank Atlantis and the gleaming cities, and the years of the rise of the sons of Aryas, there was an Age undreamed of, when shining kingdoms lay spread across the world like blue mantles beneath the stars.... Hither came Conan, the Cimmerian, black-haired, sullen-eyed, sword in hand, a thief, a reaver, a slayer, with gigantic melancholies and gigantic mirth, to tread the jeweled thrones of the Earth under his sandaled feet.

"The Nemedian Chronicles," reprinted in P.S. Miller & J. Clark, A Probable Outline of Conan's Career (1938).⁵

In "Red Nails," which first appeared in Weird Tales magazine in 1936, Howard described Conan's imposing physique:

He was almost a giant in stature, muscles rippling smoothly under his skin, which the sun had burned brown.

. . . . .

His great shoulders were as broad as those of Olmec and more cleanly outlined, and his huge breast arched with a more impressive sweep into a hard waist.... He might have been an image of primal strength cut out of bronze.... Conan was a figure out of the dawn of time....

R. Howard, "Red Nails," reprinted in Conan the Warrior 15, 95 (L.S. de Camp ed. 1967). Conan's job is quite interesting, at least by today's standards: a "mercenary swordsman, ... hetman of the kozaki who dwell along the Zaporoska River," Conan travels all over the world seeking (and finding) treasure, and grappling with monsters, magicians, and scantily-clothed women. Nor would gray flannel be appropriate for someone in Conan's profession. Conan wears a "pantherskin loin-clout" and a "hauberk of leather and mail mesh." A "broad leather belt" encircles Conan's hard waist, and Conan never leaves home without his "broadsword and poniard." R. Howard, "The Hour of the Dragon," reprinted in Conan the Conqueror 24, 121 (L.S. de Camp ed. 1967); "Red Nails," supra, at 15.

Robert Howard ultimately wrote twenty plus Conan stories before he committed suicide in 1936.⁶ All were originally published in Weird Tales, and all came under the blanket copyrights secured for each issue of the magazine in the name of the Popular Fiction Publishing Co. When the copyrights lapsed after twenty-eight years, however, only seven of the seventeen were renewed. Declaration of E. Fulton Brylawski (Sept. 11, 1987). As a result, the Conan of Robert Howard resides in the public domain.

CPI, the ultimate beneficiary of Howard's genius, owns copyrights in eight Conan comic books published by Marvel Comics in the late 1970s.⁷ In the first count of its complaint, CPI alleges that Mattel's He-Man doll infringes its rights in Conan. Third amended complaint ¶¶ 22-27. A plaintiff alleging copyright infringement must prove that she owns a valid copyright and that the defendant copied the protected work without authorization. E.g., Eckes v. Card Prices Update, 736 F.2d 859, 861 (2d Cir.1984) (citing Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir.1977)); Manufacturers Technologies, Inc. v. Cams, Inc., 706 F.Supp. 984 (D.Conn.1989). Yet the law does not proscribe the copying of material that cannot be copyrighted. The Court thus begins by assessing the validity of CPI's registrations.⁸

One of the first rudiments of intellectual property is that no one may copyright an idea. The benefits of the Copyright Act of 1976, Pub.L. No. 94-553, 90 Stat. 2541 (codified as amended at 17 U.S. C. §§ 101-810 (1982 & Supp. IV 1986)), extend only to "works of authorship fixed in a tangible medium of expression." 17 U.S.C. § 102(a); see id. § 102(b); see also Mazer v. Stein, ...