Maljack Productions, Inc. v. GoodTimes Home Video Corp.

• Citation: 81 F.3d 881
• Decision Date: 17 April 1996
• Docket Number: Nos. 94-56444,95-55632,s. 94-56444
• Parties: 1995 Copr.L.Dec. P 27,515, 38 U.S.P.Q.2d 1478, 96 Cal. Daily Op. Serv. 2671, 96 Daily Journal D.A.R. 4424 MALJACK PRODUCTIONS, INC., Plaintiff-Appellant, v. GOODTIMES HOME VIDEO CORP., Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

Page 881

81 F.3d 881

1995 Copr.L.Dec. P 27,515, 38 U.S.P.Q.2d 1478,

96 Cal. Daily Op. Serv. 2671,

96 Daily Journal D.A.R. 4424

MALJACK PRODUCTIONS, INC., Plaintiff-Appellant, v. GOODTIMES HOME VIDEO CORP., Defendant-Appellee.

Nos. 94-56444, 95-55632.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Feb. 6, 1996.

Decided April 17, 1996.

David A. Gerber, D. Gerber Law Offices, Oxnard, California, for plaintiff-appellant.

Helene M. Freeman, Dorsey & Whitney PLLP, New York City, for defendant-appellee.

Appeal from the United States District Court for the Central District of California, Ronald S.W. Lew, District Judge, Presiding. No. CV-93-01925-RSWL.

Before BEEZER, BRUNETTI and JOHN T. NOONAN, Circuit Judges.

BEEZER, Circuit Judge:

Maljack Productions, Inc. ("MPI") alleges that GoodTimes Home Video Corp. ("GoodTimes") is violating copyright, trademark and California law by producing and selling videocassette recordings of the movie "McLintock." The district court granted summary judgment for GoodTimes and awarded attorneys' fees. We have jurisdiction pursuant to 28 U.S.C. § 1291, and we affirm.

I

MPI received a quitclaim interest in videocassette recordings of "McLintock" from Batjac Productions, Inc., which owned the copyright to the film. The "McLintock" motion picture copyright expired in 1991, and the film itself is public domain work. The music in the film was separately copyrighted, however, and is still protected by copyright law. GoodTimes' rights derive from United Artists ("UA"), which owned the music copyrights. ¹

MPI claims that it is the sole owner of the "synchronization rights" to the film, i.e., the right to synchronize the music with the film. MPI bases its argument on its interpretation of the 1962 contract between Batjac and UA. Batjac, the producer of the movie, licensed the motion picture rights to UA for seven years. The section conveying the motion picture rights contained a "future technologies" clause, explicitly granting UA permission to exploit the picture "by any other scientific, mechanical or electronic means, method or device now known or hereafter conceived or created." At the end of seven years, the motion picture rights (including the future technologies clause) reverted to Batjac.

The contract separately conveyed to UA in perpetuity rights to musical works in the film. Although this section did not include a future technologies clause, the contract gave UA "any and all worldwide rights under copyright and otherwise ... to the music and musical compositions recorded or contained upon the sound track of the Picture." ²

The district court granted summary judgment to GoodTimes on MPI's copyright and trademark claims, and dismissed MPI's California Civil Code § 980 claim. The district court awarded attorneys' fees to GoodTimes on the copyright claims.

II

We review de novo a grant of summary judgment. Warren v. City of Carlsbad, 58 F.3d 439, 441 (9th Cir.1995), cert. denied, --- U.S. ----, 116 S.Ct. 1261, 134 L.Ed.2d 209. We review de novo a dismissal for failure to state a claim. Oscar v. University Students Co-Operative Ass'n, 965 F.2d 783, 785 (9th Cir.) (en banc), cert. denied, 506 U.S. 1020, 113 S.Ct. 655, 656, 121 L.Ed.2d 581 (1992).

A

The district court correctly found that MPI did not have standing to pursue its copyright claims. The Copyright Act allows "[t]he legal or beneficial owner of an exclusive right under a copyright ... to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b).

MPI claims that its synchronization rights derive from the music copyrights, which were renewed by GoodTimes' predecessor. ³ According to MPI, in the original Batjac/UA contract, Batjac reserved the right to synchronize the music in any future technologies, including videocassettes. MPI relies heavily on the lack of a future technologies clause in the section of the contract granting music rights to UA. Although UA owned the music copyrights, MPI argues that Batjac reserved the rights to the music which was recorded "on the very soundtrack of the picture."

MPI's theory, however, contradicts the plain language of the contract between Batjac and UA, which grants all music rights to UA, including the right to copyrights in "the music and musical compositions recorded or contained upon the sound track of the Picture." If the synchronization rights are part of the music copyrights, they do not belong to MPI.

Our holding is supported by Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir.1988). In Cohen, the owner of a license to exhibit the film "by means of television" was not entitled to exploit the picture in a new medium (videocassettes) which was anticipated by neither party. Id. at 854. Contrary to MPI's assertion, we did not say in Cohen that absent a future technologies clause, the author/grantor always reserves the right to exploit the work in new mediums. Rather, we relied on the language of the parties' contract, which reserved to the grantor "all rights and uses in and to said musical composition, except those herein granted to the licensee." Id. Here, the contract states without exception that all musical rights were granted to UA, not Batjac.

MPI points out that while Batjac had the copyright to the motion picture, Batjac "owned the exclusive right to use the musical works in the picture." These rights, however, existed as part of the movie copyright,

                which expired in 1991.   Batjac's use of the music in the motion picture did not give Batjac any right to the music copyrights.  Stewart v. Abend, 495 U.S. 207, 223, 110 S.Ct. 1750, 1761, 109 L.Ed.2d 184 (1990) ("The aspects of a derivative work added by the derivative author are that author's property, but the element drawn from the pre-existing work remains on grant from the owner of the pre-existing work.") 4
                

B

MPI challenges the district court's exclusion of the testimony of the film's producer and attorneys who drafted the Batjac/UA contract, which MPI argues explains the meaning of the contracts. We review the decision to exclude evidence on a summary judgment motion for an abuse of discretion. Maffei v. Northern Ins. Co. of New York, 12 F.3d 892, 897 (9th Cir.1993).

MPI states the excluded testimony proves that "[t]he parties had no intention of limiting Batjac's reverted rights in the Picture through the music rights grant" and that the terms "the Picture" and "the properties thereof," which reverted to Batjac, "included the music, script, sound, the set dressings, and every other element inherent in the creation and production of the motion picture." Even if this testimony were accepted, it would be irrelevant. This testimony shows that the parties intended for the motion picture copyright to protect Batjac's interests; however, Batjac's rights protected by the motion picture copyright expired when Batjac failed to renew the motion picture copyright. If the testimony was offered to prove Batjac had an interest in the music copyrights, under either California or federal parol evidence rules, it was properly excluded. ⁵ See Jones-Hamilton Co. v. Beazer Materials & Servs., Inc., 973 F.2d 688, 692 (9th Cir.1992) (applying California rule) (district court must consider extrinsic evidence in deciding whether contract is ambiguous, but may exclude evidence which tends to prove a meaning of the contract to which the language "is not reasonably susceptible"); United States v. Triple A Mach. Shop, Inc., 857 F.2d 579, 585 (9th Cir.1988) (applying federal rule) (parol evidence cannot contradict contract that is fully integrated and unambiguous).

III

MPI argues that GoodTimes' use of the title of the movie ("McLintock") violates trademark law. Although the title is not a registered trademark, the Lanham Act provides protection for unregistered names. ⁶ 15 U.S.C. § 1125. The Act prohibits the use of any name which "is likely to cause confusion, or to cause mistake, or to deceive ... as to the origin, sponsorship, or approval of" goods.

Generally, the title of a public domain work cannot be protected by trademark. ⁷ See G. & C. Merriam Co. v. Syndicate Publishing Co., 237 U.S. 618, 622, 35 S.Ct. 708, 709, 59 L.Ed. 1148 (1915) ("After the expiration of the copyright of that character The use of the title of a public domain work, however, cannot be used to deceive the public as to the origin of the work, and "use of the name must be accompanied with indications sufficient to show that the thing manufactured or sold is the work of the one making it." Merriam, 237 U.S. at 623, 35 S.Ct. at 710. Thus, if the title of a public domain work has acquired secondary meaning, a later user cannot employ the title in a way which would likely confuse the public as to the source of the work. G. & C. Merriam Co. v. Saalfield, 198 F. 369, 375 (6th Cir.1912).

                it is well-settled that the further use of the name, by which the publication was known and sold under the copyright, cannot be acquired by registration as a trade-mark;  for the name has become public property, and is not subject to such appropriation.").   If the law were otherwise, "the policy of limiting the period of protection of copyrighted works would be frustrated, since dissemination of the work under a different title would seriously hamper the public distribution of the work."   1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.16, at 2-193 (1995)
                

When a movie is not in the public domain, a showing of secondary meaning only requires proof that the public associates the movie title with a single source, even if that source is anonymous. See generally Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 380 (7th Cir.) (secondary meaning is established "if the public is aware that the product comes from a single, though anonymous, source"), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). As Learned Hand wrote, "The plaintiff succeeds as...