Motown Record Corp. v. George A. Hormel & Co.

• Decision Date: 16 April 1987
• Docket Number: CV 85-6973 WJR.
• Citation: 657 F. Supp. 1236
• Parties: MOTOWN RECORD CORPORATION, and Jobete Music Company, Inc., Plaintiffs, v. GEORGE A. HORMEL & CO., and Ruhr/Paragon, Inc., Defendants.
• Court: U.S. District Court — Central District of California

657 F. Supp. 1236

MOTOWN RECORD CORPORATION, and Jobete Music Company, Inc., Plaintiffs, v. GEORGE A. HORMEL & CO., and Ruhr/Paragon, Inc., Defendants.

CV 85-6973 WJR.

United States District Court, C.D. California.

April 16, 1987.

Alan G. Dowling, David W. Grace, Finley, Kumble, Wagner, Heine, Underberg, Manley, Myerson & Casey, Beverly Hills, Cal., for plaintiffs.

Timothy D. Reuben, Diana J. Simon, Rosenfeld, Meyer & Susman, Beverly Hills, Cal., for defendants.

MEMORANDUM DECISION AND ORDER

REA, District Judge.

I. INTRODUCTION

This Matter is before the Court based on defendants' Motion for Judgment on the Pleadings pursuant to Fed.R.Civ.Proc. 12(c). Defendants move for judgment on the pendent state claims alleged in the third, fifth, sixth, seventh, eighth, ninth and tenth causes of action claiming that these causes of action are preempted by the Federal Copyright Act. Defendants also move for judgment on the Lanham Act claim on the grounds that plaintiffs cannot seek trademark protection of an "image."

II. BACKGROUND

Plaintiffs Motown Record Corporation (Motown) and Jobete Music Company, Inc. (Jobete) brought this action against defendant George A. Hormel & Co. and Ruhr/Paragon, Inc. alleging copyright infringement, trademark infringement, seven pendent state claims and a claim for declaratory relief.

In 1964, the songwriting team of Brian Holland, Lamont Dozier, and Eddie Holland (Holland-Dozier-Holland) composed a musical composition entitled "Baby Love". Holland-Dozier-Holland entered into exclusive songwriting agreements with plaintiff Jobete, pursuant to which Jobete was granted the copyright in the musical composition "Baby Love." "Baby Love" was recorded by a trio of performing artists named "The Supremes." The various recording artists on "The Supremes" changed over the years, but the group always consisted of three young black women. "The Supremes" frequently performed in formal gowns (often sequined) and had "bouffant" hairstyles. The name "The Supremes" was registered as a trademark by Motown, and such registration appears to be uncontested by defendants.

Plaintiffs claim that in October of 1985, a Motown employee saw an advertisement broadcast on ABC-TV for Hormel's "Dinty Moore" brand beef stew. The commercial, in part, featured three young black women, with bouffant hair, in sequined formal gowns singing "Dinty Moore, My Dinty Moore," to the tune of the Motown classic "Baby Love." Plaintiffs further contend that the use of the image of "The Supremes" in the commercial without Motown's permission, coupled with the unlicensed use of the musical composition, is likely to cause confusion and create the misimpression by the public and the trade that Motown authorized the use of the image of "The Supremes."

Previously, the Court granted a Temporary Restraining Order and a Preliminary Injunction requiring defendants to cease the use of the offending advertisement. Defendants now bring the present motion for a Judgment on the Pleadings.

III. DISCUSSION

A. Rule 12(c) Motion

Plaintiffs first argue that defendants' motion for a judgment on the pleadings is inappropriate because the defendants have attacked only seven of the ten counts of the complaint. Therefore, plaintiffs contend, a judgment could not result from the present motion.

Plaintiffs argument against the propriety of a "partial" judgment on the pleadings is not a frequently addressed area of the law. Wright and Miller note that currently, "the Rule 12(c) motion is little more than a relic of the common law and code eras. Its preservation in the original federal rules undoubtedly was due to the undeveloped character of the summary judgment procedure...." 5 C. Wright & A. Miller, Federal Practice and Procedure § 1369, pps. 701-02 (1969).

There are numerous cases which cite in their procedural history that a trial court granted partial judgment on the pleadings. E.g., City of Los Angeles v. Lyons, 461 U.S. 95, 103 S.Ct. 1660, 75 L.Ed.2d 675 (1983) (in describing procedural history of case, Court noted that district court granted city's motion for partial judgment on the pleadings); See also Hixon v. Durbin, 545 F.Supp. 231, 233 (E.D.Pa.1982); Cutler v. Bank of America National Trust & Savings Association, 441 F.Supp. 863, 866 (N.D.Cal.1977). Nevertheless, F.R.Civ.P. 12(c) does not expressly provide for a partial judgment.

Wright & Miller point out that the legal standard to be applied in either a motion for summary judgment or judgment on the pleadings is "identical". 5 C. Wright & A. Miller, Federal Practice and Procedure § 1369, p. 700 (1969). The difference between the two is essentially one of timing. A summary judgment motion cannot be brought by a plaintiff until 20 days after the commencement of an action — a defendant may bring the motion at any time. In contrast, neither party can move for a motion for judgment on the pleadings until the close of the pleadings. Wright and Miller also state that "the summary judgment procedure offers the additional advantage that if the court refuses to grant the motion in its entirety, there remains the possibility of its awarding a partial summary judgment under Rule 56(d).... There is no comparable provision in Rule 12(c)...." 5 C. Wright & A. Miller, Federal Practice and Procedure § 1369, p. 701 (1969).

Rather than decide the propriety of a "partial" judgment on the pleadings, this Court will consider defendants' motion as a motion for partial summary judgment pursuant to F.R.Civ.P. 56(d). The parties have extensively briefed the issues before the Court, and the Court finds that it has before it all the pertinent materials necessary to decide the matter. Furthermore, at the hearing on the present motion, the Court notified the parties that due to plaintiffs opposition to the form of defendants' motion, the motion would be considered as motion for partial summary judgment. Neither party objected.

B. Preemption of Pendent State Claims

1. Title 17 U.S.C. § 301

The Copyright Act of 1976 (17 U.S.C. § 101 et seq.) describes in § 301 the extent to which the Act preempts state law causes of action based on copyright. 17 U.S.C. § 301(a) & (b) states in pertinent part:

(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by section by secton 102 and 103 ... are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to —

(1) subject matter that does not come within the subject matter of copyright as specified by section 102 and 103, including works of authorship not fixed in any tangible medium of expression.... (Emphasis Added).

Pursuant to § 301(a), preemption exists only if: 1) the state right is "within the subject matter of copyright" as defined in the Act; and 2) the state right is "equivalent" to any exclusive rights of a federal copyright. Initially, the legislature included in the bill a list of state claims which would not be preempted by federal law. An early draft of the bill read:

§ 301(b)(3): activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright ... including rights against misappropriation not equivalent to any such exclusive rights, breaches of contract, breaches of trust, trespass, conversion, invasion of privacy, defamation, and deceptive trade practices such as passing off and false representation.

S.22, 84th Cong., 2d Sess. (September 3, 1976).

The above list, however, was excluded from the actual statute without a satisfactory explanation. The result is that the courts are now left to grapple with the decision of which state law causes of action are equivalent to rights covered by the Copyright Act.

2. Third Cause of Action for Unfair Competition

Plaintiffs third claim for unfair competition under California Business and Professions Code § 17200 et seq. and § 17500 incorporates all of the allegations of the first claim for copyright infringement. Plaintiffs also included additional allegations that "the conduct of defendants in deliberately producing and broadcasting the Offending Advertisement and falsely implying that the Composition and said image of the Supremes were utilized with the permission of Motown and Jobete, constitute unfair competition." Defendants argue that the gravamen of the unfair competition claim is nothing more than the alleged taking of plaintiffs' intellectual property.

Defendants further contend that the requirements of § 301(a) are met. First, the composition "Baby Love" falls within the subject matter of copyright as specified by § 102. Second, the allegedly infringed rights are the equivalent of rights specified in § 106. Section 106 lists the exclusive rights in copyrighted works. Among these rights are the rights of reproduction and distribution.

Nimmer, in his copyright treatise, articulated the test for preemption as follows:

A right which is "equivalent to copyright" is one which is infringed by the mere act of reproduction, performance, distribution or display.... If, under state law the act of reproduction, performance, distribution or display, ... will in itself infringe the state created right, then such right is preempted. But if other elements are required, in addition to or instead of, the acts of reproduction, performance, distribution or display, in order to constitute a state created cause of action, then the right does not lie "within the scope of copyright," and there is no preemption.

1 M. Nimmer, The Law of Copyright § 1.01B3 at...