Jackson v. Universal Intern. Pictures
| Citation | 212 P.2d 574 |
| Court | California Court of Appeals |
| Decision Date | 15 December 1949 |
| Parties | JACKSON v. UNIVERSAL INTERNATIONAL PICTURES, Inc. et al. Civ. 16855. |
Loeb & Loeb, Adrian A. Kragen and Harry B. Swerdlow, Los Angeles, for appellants.
Harold A. Fendler, Beverly Hills, for respondent.
Appeal from a judgment for plaintiff entered on a verdict of a jury in an action for damages for the alleged appropriation of the title of a stage play--'Slightly Scandalous'--as the title of a motion picture.
Frederick Jackson, respondent, a writer with about 40 years experience, in 1943 wrote a stage play finally titled 'Slightly Scandalous.' In the spring of 1944 the play was privately rehearsed. On April 26, 1944, while it was in rehearsal, a publicity man was employed to exploit it, his employment to begin May 8, 1944. On May 4, 1944, a one-inch item in a single column appeared in The Hollywood Reporter, a trade journal, saying that the play, naming the star as Janet Beecher, would open in Philadelphia on May 29 and in New York on June 14, 1944. On May 9, a small item appeared in the Los Angeles Evening Herald-Express to the effect that the author was putting final directorial touches on 'Slightly Scandalous' before it left for a Philadelphia pre-New York opening May 28, and that Janet Beecher was the star. On May 10, 1944, Variety, a theatrical publication read generally by people in the theater and motion picture industries, published in New York and on sale at newsstands in the principal cities of the country, carried 'Slightly Scandalous' as among 'Shows in Rehearsal.' On May 11, 1944, the Los Angeles Times, in a New York-dated story principally about another play, said that the title of the play in which Janet Beecher was to be starred had been changed to 'Slightly Scandalous', that it would immediately go into rehearsal in Hollywood, and be due in New York in June.
Prior to and during its Philadelphia and New York run, the play was advertised in newspapers and on billboards and 'heralds' were printed for distribution in hotels and restaurants. The advertising campaign conducted in Philadelphia consisted principally of the following: From May 21 to June 3 (exclusive of Sundays), five Philadelphia newspapers published advertisements consisting of 10 to 14 lines each, and one newspaper published 25 lines on two days. One of the five newspapers on two weekdays during that period published a 60-line advertisement. From June 5 to June 10 the same five newspapers published a daily advertisement consisting of 8 to 13 lines, with the exception of one which on one weekday published a 60-line advertisement. On three successive Sundays--May 21, May 28, and June 4--three Philadelphia newspapers published an advertisement consisting of 40 to 60 lines. In addition to the foregoing, 20,000 'heralds' were printed for placement in hotels and restaurants, 50 '24-sheets' of outdoor advertising were posted on billboards, single- and double-column pictures of the star of the production were prepared and presented to the newspapers, as well as other miscellaneous forms of advertisements.
The advertising in New York was mainly as follows: on June 8, 9, 10 and 12, four of the principal New York newspapers published a 12 to 13-line advertisement. On Sunday, June 11, five New York newspapers, including the four noted above, published a 50-line advertisement, and one newspaper--The Brooklyn Eagle--published a 12-line advertisement. On June 13, 14, 15, 16 and 17, ten New York newspapers (including the four noted above) published a 6 to 13-line advertisement. There is also evidence that bills were paid for typing a number of publicity stories, but no evidence that any of them was published. As near as we can estimate from the record, the total expenditure for advertising and publicity was $3,343.20.
The play opened in Philadelphia on May 29, 1944. After the opening it was 'panned' in all Philadelphia newspapers. There were 15 performances in less than two weeks. The attendance did not exceed 3,000 persons, an average of 200 persons each performance. The capacity of the theater was in excess of 1,500 persons.
The play opened in New York on June 13, 1944, and closed June 17, 1944. During its New York run the play was 'panned' by the newspapers. There were 7 performances, 5 nights and 2 matinees. The attendance did not exceed 750 persons, an average of about 100 persons each performance. The capacity of the theater was in excess of 1,000 persons. The play was a 'flop.'
The play was not presented anywhere after June 17, 1944, and there was no mention of it in any public press in this country from June 17, 1944, to the time of trial. On August 2, 1946, appellants released and distributed throughout the country a motion picture titled 'Slightly Scandalous.' Respondent's play was a farce. Appellants' picture was a musical comedy. There was no similarity whatever between the picture and the play except the title.
The complaint alleged that at all times since the first public production and presentation of the play on May 29, 1944, the title 'Slightly Scandalous' acquired widespread recognition, notoriety, and identification in the minds of the general public as the title of plaintiff's play; that the public generally throughout the United States had at all times since May 29, 1944, identified the title 'Slightly Scandalous' with plaintiff's play; and that the title acquired, and since May 29, 1944 had continued to retain, a secondary meaning in the minds of the general public throughout the United States solely identifying plaintiff's play with said title. The verdict was for the plaintiff for $17,500.
Appellants, as grounds for reversal, contend (1) the evidence was insufficient to justify a verdict that the title 'Slightly Scandalous' had acquired and retained a secondary meaning in relation to respondent's stage play; (2) the court erred in instructions given and refused; (3) the instructions were confusing and contradictory; (4) the damages awarded were excessive; and (5) counsel for respondent was guilty of prejudicial misconduct resulting in a miscarriage of justice.
The principal question to be decided is whether the evidence was sufficient to justify the implied finding of the jury that the title of the play--'Slightly Scandalous'--had acquired and retained a secondary meaning in relation to the stage play. This is not a case of a charge that appellants passed off the picture as respondent's play. The respondent merely claims that appellants appropriated the title.
An author of a play has no right in the mere title given to his production. Paramore v. Mack Sennett, Inc., D.C., 9 F.2d 66, 67; Martenet v. United Artists Corporation, D.C., 56 F.Supp. 639, 640. To warrant an award of damages for the alleged appropriation of the title of a play there must be (1) priority of adoption; (2) the title must have been so used as to have acquired a secondary meaning which identifies it in the public mind with the play; and (3) there must be retention of the secondary meaning to the time of the alleged appropriation. Warner Bros. Pictures v. Majestic Pictures Corp., 2 Cir., 70 F.2d 310, 311; Amusement Securities Corp. v. Academy Pictures D. Corp., 162 Misc. 608; 294 N.Y.S. 279; Selig Polyscope Co. v. Unicorn Film S. Corp., Sup., 163 N.Y.S. 62; Becker v. Loew's, Inc., 7 Cir., 133 F.2d 889, 893; Golenpaul v. Rosett, 174 Misc. 114, 18 N.Y.S.2d 889, 892, 893. The acquisition of a secondary meaning creates a right akin to a property right. Without such acquisition there is no right.
Acquiring a secondary meaning signifies that the title attained popularity. Johnston v. 20th Century-Fox Film Corp., 82 Cal.App.2d 796, 810, 187 P.2d 474. The burden was upon respondent to establish the allegations of his complaint that the title 'Slightly Scandalous' acquired a secondary meaning--acquired widespread recognition and notoriety--that the title became popular, and was so identified in the minds of the general public throughout the United States as to mean only respondent's play. The essence of appellants' wrong, if one was committed, was in the distribution of a motion picture which, from its title, the public generally would mistakenly conclude was made from respondent's play. See Armstrong Paint & V. Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195, 207. If respondent failed to establish a secondary meaning or if he failed to establish that a secondary meaning once acquired was retained, such lack of proof is fatal to his action. American Fork & Hoe Co. v. Stampit Corporation, 6 Cir., 125 F.2d 472, 475; De Long Hook & Eye Co. v. Hump Hairpin Mfg. Co., 297 Ill. 359, 130 N.E. 765, 768, 769.
In determining whether a title of a play has acquired a secondary meaning three elements are primarily to be considered: (1) The length of use of the title, (2) the nature and extent of popularizing and advertising such title, and (3) the efforts in promoting a conscious connection in the minds of the public of the title with the play. See, annotation 150 A.L.R. 1082, and cases there cited. One's right to the exclusive use of a title grows out of its use and not its mere adoption. Rest. Torts, secs. 715, 716. Generally a reasonable duration of use is a factor tending to establish--and, conversely, want of a reasonable period of time within which a title has been used is a factor tending to disprove--the existence of a secondary meaning. Annotations: 150 A.L.R. 1088, and cases there cited; 40 A.L.R. 433.
A secondary meaning is not shown merely by evidence that a title has been widely advertised for a period of time. This is true because the criterion is the achievement of a result and not the effort expended in the result. DuPont Cellophane Co. v. Waxed Products Co., 2 Cir., 85 F.2d 75, certiorari denied 299 U.S. 609, 57 S.Ct. 194, ...
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