Groucho Marx Productions, Inc. v. Day and Night Co., Inc.

• Decision Date: 10 September 1982
• Docket Number: 1255,Nos. 1247,D,s. 1247
• Citation: 689 F.2d 317
• Parties: , 8 Media L. Rep. 2201 GROUCHO MARX PRODUCTIONS, INC., et al., Plaintiffs-Appellees, v. DAY AND NIGHT COMPANY, INC., et al., Defendants-Appellants. DAY AND NIGHT COMPANY, INC., et al., Third-Party-Plaintiffs-Appellants, v. Richard K. VOSBURGH, et al., Third-Party-Defendants-Appellants. ockets 82-7183, 82-7185.
• Court: U.S. Court of Appeals — Second Circuit

Page 317

689 F.2d 317

216 U.S.P.Q. 553, 8 Media L. Rep. 2201

GROUCHO MARX PRODUCTIONS, INC., et al., Plaintiffs-Appellees, v. DAY AND NIGHT COMPANY, INC., et al., Defendants-Appellants.

DAY AND NIGHT COMPANY, INC., et al., Third-Party-Plaintiffs-Appellants, v. Richard K. VOSBURGH, et al., Third-Party-Defendants-Appellants.

Nos. 1247, 1255, Dockets 82-7183, 82-7185.

United States Court of Appeals, Second Circuit.

Argued June 17, 1982.

Decided Sept. 10, 1982.

Lawrence W. Pollack, New York City (Edmund R. Rosenkrantz, George E. Regis, and Migdal, Tenney, Glass & Pollack, New York City, on the brief), for third-party defendants-appellants Vosburgh and Lazarus.

James A. Janowitz, New York City (John R. Fernbach, Arthur F. Engoron, and Pryor, Cashman, Sherman & Flynn, New York City, on the brief), for defendants-appellants Day and Night Co., Inc. and Cohen.

Peter A. Herbert, New York City (Stewart L. Levy, L. Peter Parcher, and Parcher & Herbert, P.C., New York City, on the brief), for plaintiffs-appellees.

Irwin Karp, New York City, submitted a brief for The Authors League of America, Inc. and the Dramatists Guild, Inc., amici curiae.

Before NEWMAN and PIERCE, Circuit Judges, and CANNELLA, Senior District Judge. ^*

NEWMAN, Circuit Judge:

For the second time in just two years, exercise of the diversity jurisdiction requires us to determine whether state law protects a person's so-called right of publicity-the right to exploit the commercial value of his name, likeness, or attributes-after his death. ¹ See Factors Etc., Inc. v. Pro Arts, Inc., 652 F.2d 278 (2d Cir. 1981), cert. denied, --- U.S. ----, 102 S.Ct. 1973, 72 L.Ed.2d 442 (1982), leave to file petition for rehearing granted, 652 F.2d 278 (2d Cir. 1982). In the present case the District Court for the Southern District of New York (William C. Conner, Judge) ruled that under New York law the right of publicity is descendible, and granted a motion for partial summary judgment in favor of the plaintiffs-appellees, who claim to own the rights of publicity to which three of the Marx Brothers, Groucho, Chico, and Harpo, were entitled during their lives. 523 F.Supp. 485 (S.D.N.Y. 1981). Because we conclude that the descendibility of the Marx Brothers' rights of publicity is governed by California law and that, under that State's law, such rights either do not survive death or at least do not entitle the plaintiffs to relief in this case, we reverse the District Court's ruling.

The subject matter of this litigation is the musical play "A Day in Hollywood/A Night in the Ukraine," which enjoyed a successful run on Broadway beginning in May, 1980. The play is described by its authors as a "satiric comment" on Hollywood in the 1930's. The second ("Ukraine") half of the play purports to be the way the Marx Brothers would have dramatized Chekhov's novel "The Bear." Though the names of the Marx Brothers are not used, the script calls for the three principal performers to reproduce the appearance and comedy style made memorable by Groucho, Chico, and Harpo. Plaintiffs-appellees are Groucho Marx Productions, Inc., ("GMP") and Susan Marx, Harpo's widow. Defendants-appellants are Day and Night Company, Inc. and Alexander Cohen, producers of the play; third-party defendants-appellants are Richard K. Vosburgh and Frank Lazarus, authors of the play.

The plaintiffs' amended complaint sought damages "in the nature of a license fee" because of the defendants' exhibition of the play allegedly in derogation of plaintiffs' "exclusive rights of publicity relating to the commercialization of the characters of Groucho, Chico and Harpo." Jurisdiction was predicated upon 28 U.S.C. §§ 1331(a), 1332(a)(2), 1338 (1976). Federal question jurisdiction was invoked, in addition to diversity jurisdiction, on the theory that plaintiffs have claims arising under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976). The claim based on a right of publicity, with which this appeal is concerned, appears to be grounded solely on diversity jurisdiction.

Plaintiffs moved for summary judgment on the issue of liability based on the alleged appropriation of their right of publicity in the names and likenesses of the Marx Brothers. After determining that under appropriate choice of law rules, New York law governed the substantive rights of the plaintiffs, the District Court ruled that New York recognizes a right of publicity and that such a right is assignable and descendible. Judge Conner also concluded that whatever exploitation of the right during a celebrity's life is necessary to render the right descendible is satisfied by his normal professional performing. The Marx Brothers' every performance, the Court ruled, was sufficient exploitation without the need for them to "endorse dance studios, candy bars or tee shirts," 523 F.Supp. at 492. Judge Conner then rejected the defendants' claim that the First Amendment protected their right to exhibit the play without paying damages to the plaintiffs. He reasoned that the play was neither biographical nor an attempt to convey information and that whatever literary merit it possessed was outweighed by its "wholesale appropriation of the Marx Brothers characters." Id. at 493. He therefore granted the plaintiffs' motion for partial summary judgment on the issue of liability and certified his ruling for interlocutory appeal, 28 U.S.C. § 1292(b) (1976), which this Court accepted.

We need not rule on the correctness of these interpretations of New York common law and federal constitutional law, ² for in our opinion, the initial decision to look to the law of New York was incorrect. The District Court, while noting that there was "some confusion among the parties as to which state's law governs this claim," ruled that New York, as the forum state, would apply its own substantive law, either as the law of the place of the wrong, Cousins v. Instrument Flyers, Inc., 44 N.Y.2d 698, 376 N.E.2d 914, 405 N.Y.S.2d 441 (1978) (per curiam), or as the law of the place with the most significant contacts, Babcock v. Jackson, 12 N.Y.2d 473, 191 N.E.2d 279, 240 N.Y.S.2d 743 (1963), since "(a)ll defendants are New York residents, the play has run here longer than in any other place and the Marx Brothers characters were originally developed and perfected in New York." 523 F.Supp. at 487 n. 1. However, as we recently ruled in Factors Etc., Inc. v. Pro Arts, Inc., supra, a New York court, considering a right of publicity case, would apply its property choice-of-law rules to select the state whose law determines whether a plaintiff has a protectable right of publicity. All members of the Factors panel agreed that a New York court would look to Tennessee law on that issue, since the celebrity in that case, Elvis Presley, had been domiciled in Tennessee, the corporation to which he had assigned his right of publicity was incorporated there, and the licensing agreement between that corporation and the plaintiff corporation had been executed there and provided that it would be construed in accordance with Tennessee law. 652 F.2d at 281.

Applying the same principles to this diversity case, we conclude that the law governing the existence of plaintiffs' rights is California law. The three Marx Brothers, with whom we are here concerned, were California residents at the times of their deaths. Plaintiff GMP is a California corporation. Nine months prior to his death Groucho executed in California a contract assigning to GMP his right of publicity. Chico and Harpo made no assignment of a publicity right during their lives. Chico's estate, 18 years after his death, executed a contract purporting to convey to GMP Chico's right of publicity; this contract provides that it is "made and entered in the State of California" and that it is to be governed by California law. Plaintiff Susan Marx is a California resident, purporting to assert Harpo's right of publicity as the trustee of the residuary trust under Harpo's will, which was probated in California. Though the conduct alleged to impair plaintiffs' rights occurred in New York, the existence of their rights must be determined under the law of California.

Two decisions of the California Supreme Court appear to establish that under the law of that State, an individual's right of publicity terminates at his death, Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860, 603 P.2d 454, 160 Cal.Rptr. 352 (1979) (per curiam), and Lugosi v. Universal Pictures, 25 Cal.3d 813, 603 P.2d 425, 160 Cal.Rptr. 323 (1979). Guglielmi was a suit by the alleged nephew of the actor Rudolph Valentino for damages and an injunction because of the televised showing of a fictionalized version of Valentino's life. The California Supreme Court affirmed dismissal of the nephew's suit in the following paragraph:

In Lugosi v. Universal Pictures, 160 Cal.Rptr. 323, 603 P.2d 425, we hold that the right of publicity protects against the unauthorized use of one's name, likeness or personality, but that the right is not descendible and expires upon the death of the person so protected. Lugosi controls the disposition of the present case and makes it unnecessary to discuss any further issues raised by the parties.

603 P.2d at 455, 160 Cal.Rptr. at 353. The unequivocal nature of that statement is surely a sufficient basis for this Court, exercising diversity jurisdiction, to be satisfied that plaintiffs in this case hold no rights that California would recognize after the deaths of the Marx Brothers. Nevertheless, we explore the issue further because the Lugosi decision, on which Guglielmi relies, is at least open to the interpretation that its holding is narrow and therefore it is arguable that the broadly stated rule of Guglielmi should also be understood to have a narrower meaning than first appears.

Lugosi, decided two days prior to Guglielmi, was a suit by the heirs of the actor Bela Lugosi against the motion picture company that had produced several...