Rohauer v. Killiam Shows, Inc.

• Decision Date: 08 August 1974
• Docket Number: No. 71 Civ. 4183.,71 Civ. 4183.
• Citation: 379 F. Supp. 723
• Parties: Raymond ROHAUER and Cecil W. Hull, Plaintiffs, v. KILLIAM SHOWS, INC., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

379 F. Supp. 723

Raymond ROHAUER and Cecil W. Hull, Plaintiffs, v. KILLIAM SHOWS, INC., et al., Defendants.

No. 71 Civ. 4183.

United States District Court, S. D. New York.

August 8, 1974.

COPYRIGHT MATERIAL OMITTED

Schwartz, Burns, Lesser & Jacoby, New York City (Herbert P. Jacoby, Robert E. Suggs, New York City, of counsel), for plaintiffs.

Abraham M. Fuss, New York City, for defendants Killiam Shows, Inc., Paul Killiam, and Educational Broadcasting Corp.

Nicholas A. D'Onofrio, New York City (Alexander M. Selkirk, Jr., New York City, of counsel), for defendant Bowery Savings Bank.

OPINION

BAUMAN, District Judge.

This is an action for copyright infringement brought pursuant to the Copyright Act, 17 U.S.C. § 1 et seq. The action was tried before this court, sitting without a jury, and what follows constitutes my findings of fact and conclusions of law pursuant to Rule 52(a) of the Federal Rules of Civil Procedure.¹

Some time prior to May 15, 1925, one Edith Maude Hull, a British subject, wrote a novel entitled "The Sons of the Sheik". The work was published in the United States on or about May 15, 1925 by the firm of Small, Maynard & Co., which duly registered the work in the United States Copyright Office and received thereby a Certificate of Copyright Registration bearing the number A:855221. On or about November 23, 1925, Small, Maynard transferred the United States Copyright to the author. By agreement dated December 7, 1925, she assigned the motion picture rights to one Joseph H. Moskowitz. The agreement provided, in pertinent part, that "the Seller hereby grants, sells and assigns to the Purchaser all the motion picture rights in and to the said story for the entire world, together with the sole and exclusive right to make motion picture versions thereof . . ." The agreement further provided that the author would procure the renewal of the copyright prior to its expiration and would thereupon assign the motion picture rights for the renewal term to Moskowitz.

The succeeding histories of the novel and motion picture diverge at this point, and it will be useful to consider each separately. Edith Hull, the author, died in 1943. On May 22, 1952, the United States Copyright in the novel was renewed in the name of Cecil Winstanley Hull, a plaintiff herein, who was the author's sole surviving child. A Certificate of Renewal Copyright was duly issued in her name, bearing the number R:95176. On May 6, 1965, Cecil Hull assigned to Raymond Rohauer, plaintiff herein, "all of Hull's right, title and interest (if any) in and to the motion picture and television rights of every kind and character throughout the world and in all languages in a certain literary and/or dramatic property entitled `Sons of the Sheik' . . . ." This assignment was registered in the United States Copyright Office on May 18, 1965.

Pursuant to the December 7, 1925 agreement between Edith Hull and Joseph Moskowitz, a motion picture entitled "The Son of the Sheik" starring Rudolph Valentino was produced and released for exhibition in the United States in 1926. It is undisputed that the motion picture is based on the Hull novel.² On August 24, 1926, the picture was registered in the Copyright Office by and in the name of Feature Productions, Inc., as assignee of Moskowitz Its certificate bore the registration number L:23046. This copyright was renewed on March 18, 1954 by and in the name of Art Cinema Associates, Inc., the then proprietor of the copyright. The renewal certificate was numbered R:127185. By agreement dated September 14, 1961 Art Cinema Associates, along with Mrs. Emil Jensen and Walton & Co., sold their interests in the motion picture, including the renewal copyright, to Gregstan Enterprises, Inc. Some time thereafter, Gregstan assigned all such interests, including the renewal copyright, to Killiam Shows, Inc., one of the defendants. Paul Killiam, another defendant, is and was an officer, director and sole stockholder of Killiam Shows.

On July 13, 1971, the motion picture was shown on television station WNET, which operates on Channel 13 in the New York Metropolitan area and which is owned by the Educational Broadcasting Corporation (hereinafter "Broadcasting"), another defendant. The showing was made possible by a grant of $75,000 from the Bowery Savings Bank, also a defendant, which was underwriting a series of 12 motion pictures entitled "The Silent Years", all of which were to be shown on WNET. The film required for this exhibition was made by Broadcasting from a print made available to it by Killiam Shows; the consideration paid for the use of the print was furnished to Broadcasting by Bowery.

The July 13 showing occurred without any license from plaintiffs Rohauer or Hull.³ Several years earlier, by letter of counsel dated May 12, 1966, Rohauer had informed Killiam of his assignment from Cecil Hull and advised him that any showing of the picture would constitute an infringement of his rights. On July 12, 1971, the day before the first television showing, Rohauer's counsel informed Broadcasting that the scheduled showing would constitute an infringement of rights granted him by Cecil Hull. The instant action was commenced on September 22, 1971, and claimed copyright infringement based on the July 13 showing.

After the action was commenced, the film was shown twice more on Channel 13 as part of "The Silent Years" series: on October 11 and October 16, 1971. By agreement of the parties, the complaint is deemed amended to include the additional showings as alleged acts of infringement.

Also relevant here is a brief recitation of the history of the motion picture's use prior to July 13, 1971. It is undisputed that between 1952 and 1965 Rohauer was responsible for numerous showings of the motion picture, a print of which he had purchased from the president of Art Cinema Associates. It is also undisputed that the motion picture had been shown extensively in the United States as part of a series entitled "Silents Please" which began in 1960; Killiam Shows or its predecessors in interest controlled by Killiam had furnished the print for such showings. The film was also shown on television in Great Britain between 1962 and 1966 as part of the "Silents Please" series. There is no evidence that Cecil Hull ever objected to any of these uses, or that she was aware of them.

I

As the foregoing statement of facts indicates, both sides claim ownership of the motion picture rights to "The Son of the Sheik". The principal legal question which the case presents, then, is whether the grant of the motion picture rights from Edith Hull to Joseph Moskowitz, to which Killiam Shows has succeeded, constituted proper authorization for the showings which took place over Channel 13. Defendants, of course, claim that it does. Plaintiffs, however, argue that the subsequent renewal of the copyright by Cecil Hull following Edith Hull's death extinguished any rights which Moskowitz and his successors in interest acquired. My understanding of the applicable authorities convinces me that plaintiffs' view is correct.

It has been held in this Circuit that when an author of a copyrighted work dies prior to the expiration of the copyright term, and the next of kin applies for renewal before the term expires, he acquires "a new and independent right in the copyright, free and clear of any rights, interests, or licenses attached to the copyright for the initial term." Fitch v. Shubert, 20 F.Supp. 314 (S.D. N.Y.1937); G. Ricordi & Co. v. Paramount Pictures, 189 F.2d 469 (2nd Cir. 1951); Silverman v. Sunrise Pictures Corp., 273 F. 909 (2nd Cir. 1921). See also Bricker, "Renewal and Extension of Copyright", 20 So.Calif.L.Rev. 23 (1955) at pp. 27-31. I also find highly persuasive the views of the leading text writer in this field: "If the author (or other assignor of the renewal expectancy) is not living when the renewal rights vest, then those persons who by statute succeed to the renewal rights are not bound by any assignment executed by the author (or by any assigning member of a prior renewal class) so that the assignee takes nothing." Nimmer on Copyright, § 117.3.

Nimmer has also addressed the precise question with which I am confronted here:

"A motion picture producer whose rights in the `underlying' work terminate at the expiration of the original term may not thereafter make additional `prints' of the film, nor may he reproduce a new motion picture based upon the same work. Both of such acts would constitute unauthorized copying. A more difficult question is whether the mere exhibition in theatres or on television of previously created film prints constitutes an infringement of copyright in the underlying work. It would seem that such conduct would constitute an infringement of either the right to make copies, the right to make other versions, the right to dramatize a non-dramatic work, or the right to perform a `transcription or record' of a non-dramatic literary work." Nimmer, supra, § 118.

Defendant argues, as I understand it, that the motion picture is an independently copyrighted derivative work, the use of which cannot be controlled by the holder of the renewal copyright in the underlying work. Although the view is hardly illogical, I can find no support for it in the applicable precedents; as I have already noted, such precedents as do exist repudiate this argument. One case that directly considered the supposed "independence" of a derivative work is Sunset Securities Company v. Coward-McCann, Inc., 47 Cal.2d 907, 306 P.2d 777 (1957), reversing 297 P.2d 137 (Dist.Ct. of Appeal, 2nd Dist. 1956). In that case a publisher which was the proprietor of a duly copyrighted novel sold the motion picture rights to a film company under an agreement which gave the purchaser such rights for a ten year period. The agreement further provided that all rights would revert to the publisher at the end of that period unless the purchaser paid an...