Russell v. Price

• Decision Date: 20 September 1977
• Docket Number: No. CV 75-1600-JWC.,CV 75-1600-JWC.
• Citation: 448 F. Supp. 303
• Court: U.S. District Court — Central District of California
• Parties: Cyril RUSSELL, etc., et al., Plaintiffs, v. Daniel A. PRICE et al., Defendants.

448 F. Supp. 303

Cyril RUSSELL, etc., et al., Plaintiffs, v. Daniel A. PRICE et al., Defendants.

No. CV 75-1600-JWC.

United States District Court, C. D. California.

September 20, 1977.

Mitchell N. Reinis of Katz, Hoyt & Bell, Los Angeles, Cal., for plaintiffs.

Gerald M. Singer, Los Angeles, Cal., Stanley H. Handman, Burton C. Jacobson, Beverly Hills, Cal., for defendants.

MEMORANDUM OPINION

CURTIS, District Judge.

This action for copyright infringement comes before this court on a motion for summary judgment based upon the following undisputed facts.

In 1913, George Bernard Shaw registered a copyright on his stage play, "Pygmalion", which copyright was renewed in 1941. It was originally due to expire in 1969, but it has been extended by an Act of Congress and is currently in effect. George Bernard Shaw died in 1950 and the current proprietors of the copyright are the legatees under his will, public trustees for the British Museum, the National Gallery of Ireland and the Royal Academy of Dramatic Art.

In 1938, the author licensed the production and distribution of a movie to be based on his play on terms which do not appear in the record. This movie was produced by Gabriel Pascal and starred Wendy Hiller and Leslie Howard. The film was copyrighted by Metro, Goldwyn, and Mayer and Loew's, Inc., but in 1966 this copyright was allowed to expire. When and if the license from George Bernard Shaw to M.G.M. expired is not disclosed. In any event, in 1971, the copyright proprietors of the play granted a license to Janus Films, Inc. to distribute the film. Janus had purchased prints of the film from the widow of the producer, Gabriel Pascal.

In 1972, it came to Janus's attention that a defendant in the instant action, Budget Films, Inc., was distributing copies of the film which it had obtained from some unknown source. In December, 1972, Janus commenced an action in the California state court, alleging unfair competition. This action was eventually terminated in Budget's favor, upon a finding that the action was in essence one for copyright infringement over which the state courts lacked jurisdiction. The English copyright proprietors thereupon executed a power of attorney in favor of Janus, and Janus brought an action for copyright infringement in this court against Budget Films, Inc. and the other named defendants.

The defendants' defense as alleged in their answer is that when the copyright on the film expired, the film fell into the public domain free of any claims, not only of the copyright proprietors of the film, but also the proprietors of the play as well.

The issue, therefore, is whether or not the owner of the copyright on an underlying work can assert his claim against the owner of a derivative product once the derivative product has fallen into the public domain.

It appears to be well established that if one intends to create and commercially exploit a work that is derivative of a copyrighted work, a license to do so must be obtained from the owner. This license is simply permission to use a part or all of the original work, which otherwise the copyright laws would prohibit. If the derivative work is copyrighted, the owner of the derivative work is entitled to protection only as to such new matter as may be attributable to the creator of the derivative work. If, then, the copyright on the derivative work should expire while the copyright on the underlying work is still in effect, the new matter falls into the public domain, while that which has been derived from the underlying work remains protected by the copyright on the underlying work. Consequently, even though the derivative work may have fallen into the public domain, to the extent that it partakes of the original work it cannot be used without the consent of the proprietor of the underlying copyright. See Nimmer on Copyright, Sec. 45.3, Notes 73-79; Grove Press, Inc. v....