ROY EXPORT, ETC. v. Columbia Broadcasting System

Decision Date17 December 1980
Docket NumberNo. 78-Civ. 2417.,78-Civ. 2417.
CourtU.S. District Court — Southern District of New York




Paul, Weiss, Rifkind, Wharton & Garrison, New York City, for plaintiffs; Stuart Robinowitz, Steven B. Rosenfeld, Mary B. Seyferth, New York City, of counsel.

Coudert Brothers, New York City, for defendant; Carleton G. Eldridge, Jr., John M. Keene, III, June A. Eichbaum, New York City, of counsel.

LASKER, District Judge.

Columbia Broadcasting System, Inc. ("CBS") moves for a judgment notwithstanding the verdict, or, in the alternative, for a new trial, pursuant to Rule 50(b), Fed.R.Civ.Pr., following a three week trial in which the jury found that CBS had infringed plaintiffs' statutory and common law copyrights and had unfairly competed with plaintiffs.1 CBS maintains that its motions for directed verdict and dismissal should have been granted because (1) its use of the copyrighted works was protected as a matter of law by the fair use doctrine or the First Amendment to the Constitution; (2) plaintiffs had no common law copyright interest in any work in issue; (3) the common law unfair competition claim was federally preempted by the copyright statutes in this case; and (4) its use of two of the copyrighted works was authorized as a matter of law. CBS also claims that punitive damages were unwarranted in this action or were excessive and duplicative and that errors in the jury charge and in the admission of evidence require a new trial.2

In a motion under Rule 50(b), the evidence is to be viewed in the light most favorable to the plaintiffs, and plaintiffs are entitled to the benefit of all inferences which the evidence fairly supports. Continental Ore Co. v. Union Carbide & Carbon Corp., 370 U.S. 690, 696, 82 S.Ct. 1404, 1409, 8 L.Ed.2d 777 (1962). If there was sufficient evidence to present a jury question on a particular claim, then the denial of a motion for directed verdict on that claim was proper and the motion for judgment notwithstanding the verdict must be denied. Gehrhardt v. General Motors Corp., 581 F.2d 7 (2d Cir. 1978); Epoch Producing Corp. v. Killiam Shows, Inc., 522 F.2d 737, 742 (2d Cir. 1975), cert. denied, 424 U.S. 955, 96 S.Ct. 1429, 47 L.Ed.2d 360 (1976).


The works at issue in this case are Charlie Chaplin films and derivative works. The plaintiffs own the copyrights in, and various distribution rights to, the six motion pictures relevant to this case.3 (PTO ¶¶ 5, 6). Each film was written, produced, directed by and starred Charlie Chaplin.

Between 1956 and 1971, Roy Export acquired from Chaplin and his corporation the sole and exclusive ownership of the copyrights in the Chaplin films. (PTO ¶ 7). Black, Inc. owns the sole and exclusive worldwide distribution rights until 1986. (PTO ¶ 8). De Dam acquired from Black, Inc. the exclusive United States television rights to the films until 1986 and the exclusive United States theatrical rights. (PTO ¶ 9). rbc Films has held licenses for United States non-theatrical distribution rights for the Chaplin films since 1973 and, since 1975 has held exclusive licenses for United States non-theatrical distribution rights for "The Gentleman Tramp." (PTO ¶ 10). Bert Schneider and Mo Rothman had at all relevant times authority to act on behalf of Black, Inc. and De Dam in authorizing use of the Chaplin films. (PTO ¶ 1(d)).

In 1972, the Academy of Motion Picture Arts and Sciences ("AMPAS") approached Schneider with the possibility of persuading Chaplin to return to the United States for the first time in twenty years to receive a special award from AMPAS during the 1972 nationally televised Academy Awards presentation. In connection with Chaplin's appearance on the Academy Awards show, AMPAS requested that Schneider supervise the preparation of a tribute to Chaplin consisting of highlights from the Chaplin films. Schneider enlisted the aid of the noted director, Peter Bogdanovitch, who in turn recommended that Richard Pattersen be used for film editing. They selected particular scenes, planned the particular sequence and timing, and produced a 13 minute film consisting of highlights from the Chaplin films. After showing it to Chaplin, a scene was added. This film (the "Compilation") was then played on the 1972 Academy Awards telecast. (Tr. 238-241). As Schneider testified, the understanding with AMPAS was that the Compilation was to be used on the Academy Awards broadcast only, and that AMPAS had no right to use it again. (Tr. 238-241). The Compilation is the subject of plaintiffs' common law copyright infringement claim.

In 1974, by virtue of various agreements entered into between plaintiffs and others, plaintiffs agreed to produce a film biography of Chaplin. Schneider acted as producer of this film, which was completed in 1975 and entitled "The Gentleman Tramp." Many of the same highlights of Chaplin's films which had been included in the Compilation were included in "The Gentleman Tramp," Roy Export having authorized their use. (PTO ¶ 30). Two versions of "The Gentleman Tramp" were prepared, one designed for American television as a 90 minute special, the other for foreign theatrical exhibition. Roy Export owns the copyrights to "The Gentleman Tramp." (PTO ¶¶ 31-35).

In 1973, CBS had begun work on its own retrospective program about Chaplin for use at the time of Chaplin's death. CBS soon learned of plaintiffs' copyrights on the Chaplin films and plaintiffs' plans to produce their own retrospective biography ("The Gentleman Tramp"). CBS repeatedly requested permission to use excerpts from the Chaplin films, but plaintiffs refused, explaining that they themselves were producing the "definitive" Chaplin biography. (Pl. Ex. 15, 16, 18, 23-26, 36, 38, 40, 42). Nevertheless, CBS prepared a "rough cut" which included two scenes from copyrighted films which CBS had obtained in 1972 for use on its "60 Minutes" program.

In 1976, rbc Films sent CBS a print of "The Gentleman Tramp" in an attempt to sell CBS a license for the film. CBS screened the film but did not purchase the license. In December, 1977, rbc made another unsuccessful attempt to sell the license for "The Gentleman Tramp" to CBS.

On December 25, 1977, Charlie Chaplin died. Russell Bensley, director of the CBS Special Events Unit, attempted to contact Schneider and Rothman to see if they had changed their minds and would grant CBS permission to use excerpts. The same day, CBS obtained from NBC a copy of the Compilation which had been shown on the Academy Awards broadcast. Although CBS was unable to reach Schneider or Rothman, it decided to proceed with a retrospective. At that time, CBS had two possible versions available for broadcast, one the "rough cut" consisting primarily of public domain footage, the other a new version which incorporated, with minor editions, the Compilation as well as other copyrighted material. (Tr. 661, 675-76). Richard Salant, the President of CBS News, made the final decision to use the latter version, 40% of which consisted of plaintiffs' copyrighted films. That show was broadcast on December 26, 1977, between 11:30 P.M. and Midnight (EST). (PTO ¶¶ 60, 64; Tr. 683-692).

The CBS broadcast has given rise to this suit. The jury concluded that CBS' use of the Chaplin films (consisting of CBS' use of the eleven scenes contained in the Compilation, and two other copyrighted excerpts) constituted an infringement of plaintiffs statutory copyright in the films themselves, CBS' use of the Compilation constituted an infringement of plaintiffs' common law copyright, and CBS' conduct constituted unfair competition with plaintiffs' Chaplin retrospective, "The Gentleman Tramp."


CBS asserts that its motions to dismiss and for a directed verdict with respect to the statutory copyright infringement claim should have been granted because its use of excerpts from the Chaplin films constituted fair use as a matter of law. As we understand its position, CBS does not dispute that the applicability of the fair use defense is ordinarily a factual question for the jury to determine. Meeropol v. Nizer, 560 F.2d 1061, 1071 (2d Cir. 1977), cert. denied, 434 U.S. 1013, 98 S.Ct. 727, 54 L.Ed.2d 756 (1978). Rather, CBS contends that the facts pertinent to the fair use defense were not seriously in dispute. (Defendant's Brief, pp. 15-16).

The doctrine of fair use creates a "privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent, notwithstanding the monopoly granted to the owner..." Rosemont Enterprises, Inc. v. Random House, Inc., 336 F.2d 303, 306 (2d Cir. 1966), cert. denied, 385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967), quoting Ball, The Law of Copyright and Literary Property, 260 (1944). The doctrine is meant to balance the public's interest in the dissemination of information with the exclusive rights of the copyright holder. Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91 (2d Cir. 1977), cert. denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1977). Four factors have traditionally been considered in determining the applicability of the Fair Use defense:4 (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Iowa State University Research Foundation, Inc. v. American Broadcasting Companies, Inc., 621 F.2d 57 (2d Cir. 1980).

A. The Purpose and Character of CBS' Use of Plaintiffs' Copyrighted Material

CBS maintains that only the fourth factor — the...

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