Shaw v. Time-Life Records

• Decision Date: 04 December 1975
• Docket Number: TIME-LIFE
• Citation: 341 N.E.2d 817,379 N.Y.S.2d 390,38 N.Y.2d 201
• Parties: , 341 N.E.2d 817, 190 U.S.P.Q. 573 Artie SHAW, Respondent, v.RECORDS, a Division of Time Incorporated, Appellant.
• Court: New York Court of Appeals Court of Appeals

Page 390

379 N.Y.S.2d 390

38 N.Y.2d 201, 341 N.E.2d 817, 190

U.S.P.Q. 573

Artie SHAW, Respondent, v. TIME-LIFE RECORDS, a Division of Time Incorporated, Appellant.

Court of Appeals of New York.

Dec. 4, 1975.

Harold R. Medina, Jr., and Kenneth M. Kramer, New York City, for appellant.

Theodore H. Friedman and David G. Miller, New York City, for respondent.

JASEN, Judge.

Many Americans, perplexed by the turmoil of our turbulent era, have sought succor and solace in the fond remembrance of sweeter years gone by. That magical span of time between the two World Wars seems to offer a special attraction and allure. Our informational and entertainment media have focused attention on the writers, artists and musicians who flourished during the second, third and fourth decades of this century. A large number of commercial ventures have been launched with a view towards capturing a piece of the nostalgia market. Nostalgia-oriented pitches are but one segment of the myriad of solicitations conducted by record, book and magazine companies throughout the State and the Nation. Given the massive amount of radio, television, magazine and direct mail advertising, very few citizens are unaware of the kinds of wares that these businesses have to offer. The fallout from one such enterprise is before our court today. Artie Shaw, a band leader and musician of great renown in the 20's, 30's and 40's, brought an action against Time, Incorporated, asserting four causes of action. Shaw claims that Time-Life Records' 'Swing Era' series of recordings invaded his privacy, made unauthorized use of his name, damaged his reputation, and unfairly competed with Shaw's own phonograph records. The plaintiff's damages are stated to aggregate $2,000,000. Special Term has denied in all respects defendant's motion for summary judgment. The Appellate Division, with one Justice dissentin affirmed the order. Leave to appeal to our court was granted upon a certified question--whether the summary judgment motion was properly denied.

In 1969, Time-Life Records, a division of Time, Incorporated, decided to produce a series of records reflecting the music of the Swing Era. Time-Life Records determined that the essence of swing music could not be recaptured by simply reissuing the old 78 r.p.m. recordings. Instead, it hired a modern orchestra to cut new stereo records, utilizing the same musical arrangements made popular by the actual swing bands. In addition, a few-selections were taken from an earlier Capitol Records album made by the Glen Gray Casa Loma Orchestra. A total of 450 different arrangements were included in the 'Swing Era Series'. Twenty-five Artie Shaw arrangements were in the series. Three of the Shaw selections had been recorded earlier by the Glen Gary orchestra. The rest were Time-Life re-creations. Aside from the plaintiff's work, arrangements popularized by such artists as Tommy Dorsey, Count Basie, Glenn Miller and Duke Ellington were among those represented in the series. However, none of the name artists played as much as a single note on the Time-Life recordings.

To promote its albums, Time-Life and its advertising agency conducted a massive advertising campaign. Over 60 different direct mail solicitations and magazine advertisements were utilized in the promotion. In one mailing, nearly 12,000,000 fliers were distributed. Advertisements vertisements were placed in newspapers and magazines throughout the country, including Time, Life and Sports Illustrated--the mass circulation publications of Time, Incorporated. The plaintiff cites the advertising copy written for these promotions as the instruments that have caused him damage.

Since the 1930's Artie Shaw has entered into recording contracts with a number of different recording companies. His primary association, however, has been with RCA Victor records. RCA, mounting the same nostalgia bandwagon, arranged with the Reader's Digest Record Album Service to issue a four-record set entitled 'Swing with Artie Shaw'. The RCA Reader's Digest package contains original Shaw performances which have been electronically re-recorded to give a stereophonic effect. This series has also been heavily promoted in much the same manner as Time-Life's. RCA also markets the unaltered Shaw originals, as well as other electronic re-recordings. Thus, the consumer has a variety of different commodities to select from. There are Time-Life's stereo re-creations, the RCA Reader's Digest stereo re-recordings, and the other RCA originals and re-recordings. Not unexpectedly, the plaintiff, the defendant and the critics claim that there are differences in the quality of these records. Another distinguishing feature, significant at least to the plaintiff, is that Artie Shaw receives royalties on the RCA and RCA Reader's Digest record sales, but receives nothing from Time-Life.

In order to resolve the issue presented by this appeal, we must parse the plaintiff's four causes of action and analyze the legal principles upon which the actions are predicated. The first two causes of action are grounded in sections 50 and 51 of the Civil Rights Law. Section 50 prohibits the use of the name, portrait or picture of a living person for purposes of trade or advertising without his prior written permission. Section 51 allows an injured party to seek injunctive relief as well as to obtain monetary compensation for his damages. However, section 51 also creates a limited exception permitting the use of the name or picture of an author, composer or artist in conjunction with artistic productions which have been 'sold or disposed of with such name, portrait or picture used in connection therewith'. We conclude that the exception applies in this case and that the defendant was entitled to summary judgment on the plaintiff's Civil Rights Law causes of action.

Artie Shaw did not hold the copyrights to the musical compositions which he arranged. Those rights were held by others who were duly compensated by Time-Life. Although musical compositions can be afforded copyright protection, arrangements made of those compositions are not copyrightable. Absent a claim of unfair competition, a competitor may appropriate any musical arrangement which is not so distinctive as to constitute a separate musical entity. (Supreme Records v. Decca Records, D.C., 90 F.Supp. 904, 908--909.) Artie Shaw does not have any property interest in the Artie Shaw 'sound'. So long as there is an absence of palming off or confusion, competitors might 'meticulously' duplicate or imitate his renditions of musical compositions. (Miller v. Universal Pictures Co., 11 A.D.2d 47, 49, 201 N.Y.S.2d 632, 634, affd., 10 N.Y.2d 972, 224 N.Y.S.2d 662, 180 N.E.2d 248, mot. for rearg. den., 11 N.Y.2d 721, 225 N.Y.S.2d 1027, 181 N.E.2d 227.) Since Shaw placed his arrangements in the public domain without the benefit of copyright protection, Time-Life was free to copy them and could truthfully state that the arrangements had been created by Artie Shaw. (Jaccard v. Macy & Co., 265 App.Div. 15, 37 N.Y.S.2d 570; Shostakovich v. Twentieth Century-Fox Film Corp., 196 Misc. 67, 69, 80 N.Y.S.2d 575, 577, affd., 275 App.Div. 692, 87 N.Y.S.2d 430; see Brociner v. Radio Wire Tel., 15 Misc.2d 843, 183 N.Y.S.2d 743.) Since Artie Shaw 'disposed of' his arrangements with his name 'used in connection therewith', the privacy protections of the Civil Rights Law are not applicable. (See Geisel v. Poynter Prods., D.C., 295 F.Supp. 331, 356; but cf. Neyland v. Home Pattern Co., 2 Cir., 65 F.2d 363, cert. den. Sub nom. Curtis Pub. Co. v. Neyland, 290 U.S. 661, 54 S.Ct. 76, 78 L.Ed. 572.)

The plaintiff's claim for damages based on unfair competition, the fourth cause of action in the amended complaint, stands on a different footing. While Time-Life was entitled to copy Shaw's arrangements and to compete...