Inge v. TWENTIETH CENTURY-FOX FILM CORPORATION

• Decision Date: 30 July 1956
• Parties: William INGE and The W-S Bus Stop Company, a Limited Partnership, Plaintiffs, v. TWENTIETH CENTURY-FOX FILM CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

143 F. Supp. 294

William INGE and The W-S Bus Stop Company, a Limited Partnership, Plaintiffs, v. TWENTIETH CENTURY-FOX FILM CORPORATION, Defendant.

United States District Court S. D. New York.

July 30, 1956.

COPYRIGHT MATERIAL OMITTED

Paul, Weiss, Rifkind, Wharton & Garrison, New York City, for plaintiffs. Jay H. Topkis, New York City, Stephen Wise Tulin, New York City, of counsel.

Dwight, Royall, Harris, Koegel & Caskey, New York City, for defendant. John F. Caskey, Harry J. McIntyre, Herbert C. Earnshaw, New York City, of counsel.

LEVET, District Judge.

This is a motion by plaintiffs for a preliminary injunction to restrain the defendant during the pendency of this action and until December 1, 1956, from exhibiting in the United States or Canada any motion picture version of the work entitled "Bus Stop," and for other collateral relief. The action was begun in the Supreme Court, New York County, and later removed to this Court.

The plaintiff William Inge was the author and The W-S Bus Stop Company, a Limited Partnership, hereinafter referred to as plaintiff company, was the Broadway producer of the play "Bus Stop." The defendant is a Delaware corporation engaged in the production of moving pictures.

Prior to May 19, 1954, plaintiff Inge wrote the original dramatic work entitled "Bus Stop." The plaintiff company is the assignee of Whitehead-Stevens Productions, Inc. under a contract with the plaintiff Inge, dated November 15, 1954, and has the sole and exclusive right to produce and present the play on the stage of the United States and Canada, subject, however, to the contract between plaintiff Inge and the defendant, hereinafter mentioned.

On March 23, 1955, an agreement was made between plaintiff Inge and the defendant, whereby Inge granted to the defendant certain motion picture and other rights in the play. The plaintiff company consented to the agreement. The provision which is involved here is Paragraph Fifteenth of this contract, which is as follows:

"(a) With respect to release of the first motion picture version of the Play, Purchaser agrees as follows:

"1. With respect to United States and Canada, Purchaser agrees not to release said motion picture anywhere therein until all first-class stage presentations of the Play therein have closed (as herein defined), or June 1, 1956, whichever is earlier. All first-class stage presentations of the Play in United States and Canada shall be deemed to have `closed' if (i) the first-class stage presentation of the Play on Broadway, New York shall have closed and (ii) after September 15, 1955 there shall have elapsed a period of thirty (30) days during which period no first-class road company of the Play shall have been presented in the United States or Canada and during which period there have not been executed a contract for a first-class road booking of the Play in the United States or Canada thereafter and contracts with the two leads in the Play to appear therein. Seller agrees that, after the close of the first-class presentation of the Play on Broadway, New York, Seller will in good faith notify Purchaser of plans concerning a road tour of the Play in the United States or Canada.

"2. With respect to England, Scotland and Wales (herein called England) if prior to January 1, 1956 a contract has been executed for a first-class presentation of the Play in England and pursuant to said contract said presentation is scheduled to open on or before March 1, 1956, then and in that event Purchaser agrees not to release said motion picture in England until the said first-class presentation of the Play shall have closed or June 1, 1956, whichever is earlier.

"3. With respect to Australia and New Zealand, if prior to January 1, 1956 a contract has been executed for a first-class presentation of the Play in Australia or New Zealand and pursuant to said contract said presentation is scheduled to open on or before March 1, 1956, then and in that event Purchaser agrees not to release said motion picture in Australia or New Zealand until the said first-class presentation of the Play shall have closed or June 1, 1956, whichever is earlier.

"(b) With respect to United States and Canada, England and Australia, Purchaser agrees that until four (4) weeks prior to the earliest date on which the first motion picture produced hereunder may be released in each of said countries, Purchaser will not cause any theatre in such territory under the control of Purchaser, to advertise the date of the opening in said theatre of the said motion picture. Nothing herein contained shall prevent Purchaser at any time from advertising or publicizing the said motion picture in such manner as Purchaser may determine."

By a letter agreement or modification bearing the same date, the date "June 1, 1956" was changed to "December 1, 1956."

The play had a successful run of well over a year on Broadway, closing on April 21, 1956. A road company was able to earn profits for the producer of $86,139.13. The then current road company closed in New Haven, Connecticut, on May 5, 1956. Under the terms of the agreement between the parties, the defendant was to become entitled to release its film "Bus Stop," unless within thirty days, or by June 4, 1956, contracts were signed for a further first-class road company.

On May 8, 1956, Audrey Wood as attorney-in-fact for plaintiff Inge, wrote Joseph Moskowitz, vice president of the defendant, to the effect that the last road company of the play closed on May 5, 1956, in New Haven, and notified the defendant that the plaintiffs intended to take the play on tour in the Fall of the year, enclosing a projected road company tour schedule commencing on August 13 at Chicago and running through the months of October and November 1956 and continuing through December 1956 and January and February 1957.

At some time before May 19, 1956, apparently the defendant determined to release the picture "Bus Stop" in August 1956. Notice of this intention appears in an inconspicuous line of a copy of the Motion Picture Herald of May 19, 1956. The same announcement was contained in the same publication of May 26, 1956. Whatever defendant's reasons were for this proposed action, it appears that its vice president in his affidavit said: "This company has no picture of the quality and box office appeal of `Bus Stop' to substitute for it." Defendant may have been confronted with the problem arising from its error in schedule production.

Plaintiffs contend that they were unaware of the defendant's decision to release prematurely the film and, therefore, went ahead with their plans for a further road company.

On May 28, 1956, plaintiff company and one Jules Pfeiffer entered into a sublicensing agreement, whereby Pfeiffer secured first-class stage rights in "Bus Stop" for a first-class company on tour. Plaintiff Inge concurred in this agreement in a rider accompanying the same. This contract with Pfeiffer obligated him to present the play in a first-class theatre, with a first-class cast, and with a first-class director. Pfeiffer is reputed to be an experienced producer. On May 31, 1956, it appears that Pfeiffer entered into a contract for a theatre in Chicago. Miss Helen Gallagher, star of "Hazel Flagg" and "Pajama Game" and featured in other plays, and Rip Torn, who is reputedly playing the lead on Broadway in "Cat On A Hot Tin Roof," were engaged to play the two leads.

The defendant opposes this application upon the following grounds:

(1) The restrictions on the release date of the motion picture "Bus Stop" are illegal, immoral and unenforceable;

(2) That the conditions of Paragraph Fifteenth have not been met; and (3) That there is no basis for equitable relief presented by plaintiffs' application for a preliminary injunction.

It is elementary that under the terms of the present copyright statute, 17 U.S.C.A. § 1 et seq., the unauthorized public performance of a dramatic work by means of a moving picture is unquestionably an infringement. Metro-Goldwyn-Mayer Distributing Corporation v. Bijou Theatre Co., 1 Cir., 1932, 59 F.2d 70; Stodart v. Mutual Film Corp., D.C. S.D.N.Y.1917, 249 F. 507, affirmed 2 Cir., 1949, 249 F. 513; Stonesifer v. Twentieth Century-Fox Film Corp., D.C. S.D.Cal.1942, 48 F.Supp. 196, affirmed 9 Cir., 1944, 140 F.2d 579.

The plaintiff Inge, of course, had a right to license his copyright for moving picture and other purposes. In Fox Film Corp. v. Doyal, 286 U.S. 123, 127, 52 S.Ct. 546, 547, 76 L.Ed. 1010, Chief Justice Hughes said:

"* * * The owner of the copyright, if he pleases, may refrain from vending or licensing and content himself with simply exercising the right to exclude others from using his property. Compare Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 422, 424, 28 S.Ct. 748, 52 L.Ed. 1122."

Any limitations or conditions which the parties see fit to insert will be binding and may be enforced except where they are contrary to public policy or in violation of law. Buck v. Hillsgrove Country Club, Inc., D.C.R.I., 1937, 17 F.Supp. 643; Manners v. Morosco, 252 U.S. 317, 40 S.Ct. 335, 64 L.Ed. 590; Underhill v. Schenck, 238 N.Y. 7, 143 N. E. 773, 33 A.L.R. 303.

There appears to be nothing in the agreement nor its background which sustains the defendant's contention in reference to the alleged invalidity of the restrictions in reference to the release date. The defendant asserts that the Dramatist Guild, to which plaintiff Inge belonged, required:

(1) That the so-called "pre-production deal," that is, a sale of the motion picture rights in a play which has not yet opened on the stage, be completed before the opening of the play on the stage; and

(2) That the Dramatist Guild made it mandatory in transactions for purchasing the rights to make motion pictures from proposed or active Broadway stage plays, that there be a restriction on the time before which the motion picture may be released.

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