Filmvideo Releasing Corp. v. Hastings

• Decision Date: 20 October 1976
• Docket Number: No. 75 Civ. 2248 (HFW).,75 Civ. 2248 (HFW).
• Citation: 426 F. Supp. 690
• Parties: FILMVIDEO RELEASING CORPORATION, Plaintiff, v. David R. HASTINGS, II, as Administrator with Will Annexed of the Estate of Clarence E. Mulford, Defendant, David R. Hastings, II, and Peter G. Hastings, as Trustees of the Inter Vivos Trust and of the Testamentary Trust Created by Clarence E. Mulford, Intervenors.
• Court: U.S. District Court — Southern District of New York

426 F. Supp. 690

FILMVIDEO RELEASING CORPORATION, Plaintiff, v. David R. HASTINGS, II, as Administrator with Will Annexed of the Estate of Clarence E. Mulford, Defendant David R. Hastings, II, and Peter G. Hastings, as Trustees of the Inter Vivos Trust and of the Testamentary Trust Created by Clarence E. Mulford, Intervenors.

No. 75 Civ. 2248 (HFW).

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

October 20, 1976.

Howard Gotbetter, New York City, for plaintiff.

Burns & Jacoby, New York City, by Herbert P. Jacoby, New York City, of counsel, for defendants.

OPINION

WERKER, District Judge.

This case comes before the court on plaintiff's motion pursuant to Rule 12(b)(6), Fed. R.Civ.P., for dismissal of the counterclaim for failure to state a claim upon which relief can be granted and, alternatively, for summary judgment on the counterclaim pursuant to Rule 56, Fed.R.Civ.P. I have considered the sufficiency of the counterclaim in this opinion, however, pursuant to Rule 12(b), Fed.R.Civ.P., I have treated the motion as one for summary judgment on the counterclaim since the parties have presented matters which go well beyond the pleadings.

Between 1907 and 1935, Clarence E. Mulford wrote and copyrighted seventeen "Hopalong Cassidy" books. A renewal copyright in each of the books was obtained either by Mulford or, after his death in May of 1956, by his executor. Those renewal copyrights are still effective today.¹ Seventeen Hopalong Cassidy motion pictures copyrighted by Paramount Pictures were also produced under agreements between Mulford and Prudential Studios Corporation and Mulford and Este Productions, Inc.² Although the parties dispute the extent to which the films rely upon the books or the characters in them, they agree that the copyrights in the motion pictures were not renewed and that they expired during the 1960s.

In 1973, after the Paramount copyrights had expired, plaintiff purchased physical negatives of the motion pictures. Its grantor had acquired them under a contract that restricted the interest in the films to foreign exhibition, distribution and exploitation. The purchase agreement covering the sale to the plaintiff contains similar restrictions. It also recites that the plaintiff has seen several earlier agreements governing the use of the motion pictures.

The complaint in this action seeks a declaratory judgment that the renewal copyrights in the books are invalid and that the books are therefore in the public domain. In the alternative, plaintiff seeks a declaratory judgment that the motion pictures are now in the public domain and that they are available for the plaintiff's use without restriction. In particular, the plaintiff seeks to use the films on television. The defendants and intervenors (hereinafter "defendants") have counterclaimed for an injunction restraining the plaintiff from using the motion pictures and for damages for copyright infringement. The court has jurisdiction of this suit under the Copyright Act, 17 U.S.C. § 1, et seq.

The issue is whether the defendants' renewal copyrights in the novels may be infringed by the showing on television of motion pictures now in the public domain which were made under an agreement with the author. Three cases considered at length by both sides are dispositive of this question. G. Ricordi & Co. v. Paramount Pictures, 189 F.2d 469 (2d Cir.), cert. denied, 342 U.S. 849, 72 S.Ct. 77, 96 L.Ed. 641 (1951); Rohauer v. Killiam Shows, Inc., 379 F.Supp. 723 (S.D.N.Y.1974); and Grove Press v. Greenleaf Publishing Co., 247 F.Supp. 518 (E.D.N.Y.1965) (Bartels, J.).

Ricordi, supra, involved the novel "Madame Butterfly," written by David Long and copyrighted by a third party in 1897. In 1901, David Belasco wrote a play entitled Madame Butterfly with the consent of Long and the copyright holder. Thereafter, Ricordi was licensed by Long and Belasco to prepare a libretto for the operatic version of Madame Butterfly. In 1904, it obtained an original copyright, and it later acquired a renewal copyright in the renowned Pucinni opera; Belasco's play was not copyrighted until after the opera became protected. Long renewed his copyright in the novel in 1925 and following his death Long's administrator granted the defendant the motion picture rights under the novel's renewal term. The defendant also acquired the motion picture rights in the Belasco play. Thereafter, the Belasco copyright expired without have been renewed.

Ricordi sought to make a motion picture version of the opera. Ricordi held the renewal copyright in the opera and the play was in the public domain, but the defendant argued that the motion picture would infringe its renewal copyright interest in the novel. The court held that "the plaintiff was restricted to using what was copyrightable as new matter in its operatic version of the novel." 189 F.2d at 472. When asked to clarify the effect of its decision on the use of the play, the court observed:

"When the copyright expired, the copyrightable new matter in the play was property in the public demesne, since the record discloses no renewal of the copyright." 189 F.2d at 472. (Emphasis added.)

Plaintiff contends that Ricordi should be distinguished from the instant action because it dealt with the uses of "one-dimensional" literary materials rather than "three-dimensional" films resulting from the collaborative effort of numerous individuals. Although I find this distinction novel, I do not find it persuasive. Numerous decisions demonstrate that material copyrighted in one medium may be infringed by material produced in another medium. See, e. g., Reyher v. Children's Television Workshop, 377 F.Supp. 411 (S.D.N.Y. 1974).

The court is also unable to agree with plaintiff's contention that the "three-dimensional" motion pictures necessarily constituted new matter and not derivative works.³ Plaintiff maintains that section 5 of the Copyright Act, 17 U.S.C. § 5; Copyright Office Form L-M, the application form for motion pictures; and critical reviews of the Hopalong Cassidy films that appeared in The Film Daily between October 12, 1936 and February 15, 1939 demonstrate that the motion pictures could not possibly infringe upon the renewal copyrights in the novels. Reliance upon all three sources is misplaced.

Section 5 of the Copyright Act lists fourteen classes of work which may be copyrighted. The plaintiff apparently believes that works in one class cannot infringe upon copyrights in another. However, section 5 states that the list is not exclusive and that errors in classification shall not impair copyright protection. There is no indication whatsoever that works copyrighted under one subject matter class cannot infringe copyrights secured under another. In fact, Form L-M may be used to register two distinct subject matter classes contained within section 5 of the Act. Of the reviews submitted by the plaintiff, 16 credit Mulford as the author of the film. This hardly suggests that the films could not infringe the novels. Frankly, I am unable to understand why the plaintiff submitted these exhibits for my review since they clearly do not support its view that the motion pictures must be entirely new matter.

Rohauer, supra, the second of the three cases, concerned a dispute over the television rights to "The Son of the Sheik." This motion picture starring Rudolf Valentino was produced by an assignee of the motion picture rights in the copyrighted novel written by Edith Hull. The motion picture was separately copyrighted and at the time of the alleged infringement Killiam Shows owned the renewal copyright interest. The copyright in the novel had been renewed after Edith Hull's death by her daughter Cecil who had assigned all her motion picture and television rights to Rohauer. Suit was brought by Rohauer and Cecil Hull after a copy of the motion picture made available by Killiam Shows was exhibited, on three separate occasions, by WNET, an educational television station in the New York City area.

The court held that the showings on television infringed the renewal copyright in the book held by Rohauer and Cecil Hull, despite Edith Hull's earlier assignment of the motion picture rights for the renewal term to a predecessor in interest of Killiam Shows. In doing so, it found

"highly persuasive the views of the leading text writer in this field: `If the author or other assignor of the renewal expectancy is not living when the renewal rights vest, then those persons who by statute succeed to the renewal rights are not bound by any assignment executed by the author (or by any assigning member of a prior renewal class) so that the assignee takes nothing.' Nimmer on Copyrights § 117.3." 379 F.Supp. at 727.

There is no reason to differentiate between the renewal rights of the child in Rohauer and those of the executor of Mulford here. Miller Music Corp. v. Daniels, Inc., 362 U.S. 373, 80 S.Ct. 792, 4 L.Ed.2d 804 (1959). When Mulford died without a widow or child surviving him, the right to renew the copyright devolved upon his executor by the express terms of the Copyright Act⁴ and the counterclaim states a cause of action at least with respect as to those copyrights renewed by the executor. Indeed, in anticipating the defendant's argument in opposition to the motion before the court in his memorandum of law, the plaintiff appears to concede the correctness of this position.

The plaintiff nevertheless seeks to distinguish Rohauer because the motion pictures to be televised here are no longer subject to copyright protection. The counterclaim is not for infringement of the motion picture copyrights, however; it is for infringement of the renewal copyrights in the books written by Mulford. These copyrights can be infringed by the use of materials in the public domain as readily as they are by the use of separately copyrighted matter.⁵ Grove Press, the third case to be considered, demonstrates this.

Grove Press involved Jean Genet's book...