Hammett v. Warner Brothers Pictures

• Decision Date: 24 June 1949
• Docket Number: Docket 21298.,No. 253,253
• Citation: 176 F.2d 145
• Parties: HAMMETT v. WARNER BROTHERS PICTURES, Inc.
• Court: U.S. Court of Appeals — Second Circuit

176 F.2d 145 (1949)

HAMMETT v. WARNER BROTHERS PICTURES, Inc.

No. 253, Docket 21298.

United States Court of Appeals Second Circuit.

Argued May 10, 1949.

Decided June 24, 1949.

Zissu & Marcus, New York City (Leonard Zissu, Abraham Marcus, Alan J. Stein, New York City, of counsel), for plaintiff.

R. W. Perkins, New York City (Morris Ebenstein, Joseph D. Karp, Theodore R. Kupferman, Harry R. Olsson, Jr., Brooklyn, N. Y., of counsel), for defendant.

Before CHASE, CLARK, and DOBIE, Circuit Judges.

CHASE, Circuit Judge.

Appellant, Dashiell Hammett, is the author of a detective story called "The Maltese Falcon." This story was first published serially in a magazine during 1929 and 1930, the installments being copyrighted as published by the Pro-Distributors Corporation. In 1930 the registered copyrights were conveyed by it to Alfred A. Knopf, Inc., which published the installments and revisions of them in a book, registering a copyright thereof. On June 23, 1930, Hammett and Knopf joined as "owners" in a contract conveying to Warner Bros. Pictures, Inc., extensive rights in the copyrighted material, including exclusive motion picture and radio rights in the published works and in any future arrangements or revisions of them and the exclusive rights to use of the title or titles of the works copyrighted in motion pictures. The contract gave to the assignee the right to "adapt, use, dramatize, arrange, change, transpose, make musical versions of, add to, interpolate in and subtract from such writings the language, title and dialogue thereof. * * *" Three motion pictures were made by appellee, hereinafter called "Warner," based on the copyrighted material and were themselves copyrighted; the last of them, made in 1941 under the title "The Maltese Falcon," was very successful commercially.

The principal character of "The Maltese Falcon" in both the published and the motion picture versions thus far produced is a private detective, "Sam Spade." Since the publication of "The Maltese Falcon," Hammett has written other stories in which "Sam Spade" has been the principal character and these stories have been collected and published under the title, "The Adventures of Sam Spade and other stories by Dashiell Hammett."

On May 15, 1946, Hammett assigned to other parties the exclusive right to the use in radio, television, motion pictures and other media of the name "Sam Spade" and the title, "The Adventures of Sam Spade" in connection with original material to be written by others. Subsequently, since about July, 1946, these assignees and their successors have produced a weekly radio show called "Adventures of Sam Spade," the principal character of which has been named and modeled after Hammett's detective.

On January 29, 1948, Warner wrote a letter through its attorney to the Columbia Broadcasting System in which it complained of plagiarism of its and Knopf's copyrights by the broadcast of a drama, "The Kandy Tooth," and also said, "Furthermore, it has come to our attention that in violation of our rights you are using the character Sam Spade, who is derived from The Maltese Falcon, in a series of broadcasts over your network, and are actually using the name Sam Spade in the titles of these broadcasts." On May 13, 1948, it wrote to Hammett's assignees' successor, Regis Radio Corporation, saying, "The character and name of Sam Spade are an integral part of this valuable literary property The Maltese Falcon * * *. It appears to us that your program, "The Adventures of Sam Spade," is an infringement of the rights of our client in this literary property. * * * Demand is hereby made upon you that you discontinue the use of the name and character of Sam Spade forthwith." And on May 28, 1948, it again wrote to an attorney who had replied to the letter of May 13, saying,

"So far as the character Sam Spade is concerned, it is a most important and valuable part of the Maltese Falcon which is the exclusive property of Warner Bros. in the field of radio, television and motion pictures. To use Sam Spade is to use a valuable part of the Maltese Falcon. We are of course aware that some Sam Spade stories were published after the Maltese Falcon and doubtless the copyright proprietor of the original work authorized their publication. Doubtless as a matter of law, the publisher of Maltese Falcon could, if he wished, authorize additional Sam Spade stories in book form; but Warner Bros. has the exclusive rights of the radio rights to use the Maltese Falcon and is the only one who can authorize use of Sam Spade on the air.

"Moreover, upon examination of the radio shows which have been broadcast, you will observe something much more culpable than the use of the single character Sam Spade * * *." On June 1, 1948, Hammett's assignees formally notified him of the claims against them by Warner, asserting their rights against him under warranty to them in his contract of assignment that the permitted use of the assigned rights would not subject them to liability for infringement.

On May 28, 1948, Warner, joining Alfred A. Knopf, Inc., as plaintiff pursuant to the terms of their contract, brought an action entitled Warner Bros., Inc., and Alfred A. Knopf, Inc. v. Columbia Broadcasting System, Inc., William Spier, the Wildroot Co., Inc., and Regis Radio Corp., in the District Court for the Southern District of California,¹ against the broadcasting network, the producer, the sponsor, and the successor in interest to Hammett's assignees' rights to "Sam Spade." The complaint charged that the radio dramas in the series, "The Adventures of Sam Spade" and an individual program produced apart from that series constituted infringement of copyright of, and unfair competition with, the original stories, the book, and the motion picture called "The Maltese Falcon." As to copyright infringement the complaint charged: "17. Since about September 1946, defendants and each of them have been infringing each and all of the copyrights mentioned in this complaint by dramatizing the magazine stories and book and by writing a series of dramatic radio scripts entitled `The Adventures of Sam Spade' and printing, publishing and vending said scripts, all of which scripts defendants have copied to a substantial degree from plaintiffs' copyrighted works. Said dramatic radio scripts have been produced and performed publicly for profit and transmitted by defendants and each of them within the past two years over the several radio stations affiliated with the defendant Columbia Broadcasting System, Inc. The exact number of separate infringements on the part of these defendants is not known to plaintiff at this time."

As to unfair competition, it charged: "20. * * * The character `Sam Spade' is the principal character in plaintiffs' copyrighted work `Maltese Falcon'; and the name and character of `Sam Spade' have long been well known and identified in the public's mind with the plaintiffs' work; and in radio the name and character of `Sam Spade' have come to be identified with several broadcasts licensed by plaintiffs. Defendants have without plaintiffs' permission appropriated the name and characterization of `Sam Spade' as originally created in `Maltese Falcon,' and have copied and used the same in the title as a substantial part of the content of defendants' radio program. In the course of their radio programs defendants have from time to time referred to the `Maltese Falcon' by name and have referred to various incidents, situations, and characters from the `Maltese Falcon' in an attempt to trade upon the good will of plaintiffs' works and obtain unearned benefits therefrom.

On June 18, 1948, Warner amended its complaint before answer to join Hammett as a defendant and to modify the above quoted sections by adding to 17 the allegation that, "defendants have copied from plaintiffs' works, among other things, scenes, language, dialogue, plot, characters, and other materials thereof," and by changing the quoted part of 20 to read: "The character `Sam Spade' is the principal character in plaintiffs' copyrighted work `Maltese Falcon'; and the names, characters, scenes, language, dialogue, plot and other materials used in `Maltese Falcon' have, in the field of radio and motion pictures, been well known and identified in the public's mind with the plaintiffs' work. Defendants have without plaintiffs' permission appropriated names, characters, scenes, language, dialogue, plot and other materials as originally created in the `Maltese Falcon,' and have copied and used the same as a substantial part of defendants' radio program. * * *"

This amendment followed the filing, by Hammett on June 9, 1948, of the present action for a declaratory judgment. In his complaint in this action appellant alleges substantially the facts set forth above and asks for a decree.

"1. Determining and adjudicating the rights of the parties herein in the premises aforesaid and determining and adjudicating that the defendant, Warner Brothers Pictures, Inc., has no rights to the character `Sam Spade' excepting the right to use said character in and as part of the work entitled `The Maltese Falcon' pursuant to the agreement between the parties dated June 23, 1930; and further

"2. For a decree enjoining and restraining defendant, its officers, agents, and employees, from further asserting, contending, claiming or alleging that it has any rights in or right to control the use of said character `Sam Spade' or any title featuring the name `Sam Spade' excepting the right to use said character in and as part of the work entitled `The Maltese Falcon' pursuant to the agreement between the parties dated June 23, 1930; and

"3. For such other and further relief as to the court may seem just."

Warner answered, denying the right of appellant to the decree requested, both on the ground that Warner had the sole right to the use of the character "Sam Spade" in motion pictures and radio under the terms of its...