Silverman v. CBS INC.

• Decision Date: 14 April 1986
• Docket Number: No. 84 Civ. 1894 (GLG).,84 Civ. 1894 (GLG).
• Citation: 632 F. Supp. 1344
• Parties: Stephen M. SILVERMAN, Plaintiff, v. CBS INC., Defendant.
• Court: U.S. District Court — Southern District of New York

632 F. Supp. 1344

Stephen M. SILVERMAN, Plaintiff, v. CBS INC., Defendant.

No. 84 Civ. 1894 (GLG).

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

April 14, 1986.

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Wofsey, Certilman, Haft, Lebow & Balin, New York City (Barry I. Fredericks and Jonathan D. Davis, of counsel), and Arrow, Edelstein, Gross & Asher, New York City, for plaintiff.

Moses & Singer, New York City (David Rabinowitz, Stanley Rothenberg and Erica Weissman, of counsel), for defendant.

OPINION

GOETTEL, District Judge:

The plaintiff in this action, Stephen M. Silverman, seeks a declaration regarding his right to use parts of the "Amos `n' Andy" radio programs broadcast from March 1928, through March 1948, in a Broadway musical comedy he has written. The defendant, CBS Inc., claims to hold valid copyrights as well as trademark rights in the Amos `n' Andy radio and television programs, and asserts counterclaims against Silverman for, inter alia, copyright infringement, trademark infringement, and unfair competition. Before the Court is CBS's motion for summary judgment seeking (1) dismissal of the complaint and (2) determination of liability on its counterclaims.

I. BACKGROUND

Beginning in 1928, Freeman F. Gosden ("Gosden") and Charles J. Correll ("Correll") created and broadcast a radio program known as "The Amos `n' Andy Show." On August 19, 1948, Gosden and Correll assigned all of their rights in the Amos `n' Andy scripts and radio programs, along with any goodwill attached to their creations, to CBS. Under the same agreement, Gosden and Correll continued to create new scripts for CBS. CBS broadcast "The Amos `n' Andy Show" on radio until 1955. Beginning in 1951, CBS also broadcast an "Amos `n' Andy" television series. The television series aired on network affiliate stations until 1953, and continued in nonnetwork syndication until 1966.

In 1981, the plaintiff began writing a script for a Broadway musical comedy based on the characters of Amos and Andy. In an effort to avoid potential litigation, the plaintiff asked CBS for a license to use the Amos `n' Andy characters in his script. CBS refused the plaintiff's request. The plaintiff nevertheless completed his script and sought financial backing for a Broadway production.

In early 1984, the plaintiff filed this action seeking a declaration that the "Amos `n' Andy" radio programs broadcast from March 1928, through March 1948, are in the public domain and that, therefore, he is free to make use of any parts of these programs. The plaintiff seeks a further declaration that CBS has no rights in these programs "under statutory or common law copyright or trademark, common law unfair competition, state anti-dilution law, common law or statutory rights of privacy or publicity, or any other jurisprudential theory." Complaint ¶ 1.b at 8. The plaintiff contends that CBS has abandoned any trademark rights it may have had, because it has not used any Amos `n' Andy trademarks for twenty years and has failed to police the use of these marks by others.

In April 1984, the defendant moved to dismiss the complaint for lack of a justiciable controversy. In an oral decision on June 8, 1984, we denied the defendant's motion noting that (1) the plaintiff had already made substantial preparations to produce his play, (2) threats of suits against other users of the Amos and Andy characters created a substantial likelihood that CBS would similarly assert its rights against Silverman, and (3) the likelihood of a suit by CBS was making it difficult for the plaintiff to obtain the financial backing necessary for his production.

In early 1985, CBS amended its answer and asserted five counterclaims: (1) copyright infringement, (2) trademark infringement under section 43(a) of the Federal Trademark Act of 1946, 15 U.S.C. § 1125(a) (1982), (3) common law trademark infringement and unfair competition, (4) misappropriation of CBS's goodwill associated with the "Amos `n' Andy" trademarks, and (5) improper registration of one of the plaintiff's scripts as an original work. The defendant now seeks summary judgment on these counterclaims and dismissal of the plaintiff's complaint. The plaintiff argues that numerous issues of fact mandate denial of summary judgment. He also seeks sanctions under Rule 11, claiming that the defendant's motion is harassing and brought in bad faith.

The instant summary judgment motion addresses the plaintiff's first script, entitled "Amos `n' Andy Go To The Movies."<sup>1</sup> In opposing this motion, the plaintiff has submitted a revised script, entitled "Fresh Air Taxi." He has purportedly deleted all dialogue and descriptions identified by CBS in its moving papers as infringing. CBS has not specifically addressed whether "Fresh Air Taxi" infringes its copyrights. However, it contends that (1) the plaintiff's creation and distribution of "Amos `n' Andy Go To The Movies" has already infringed its copyrights, and (2) any play based on the Amos `n' Andy characters will infringe its copyrights and trademarks, and constitute unfair competition and dilution of its marks. Consequently, we must consider whether CBS has valid copyrights and/or trademark rights in the Amos `n' Andy shows and, if so, whether the plaintiff has infringed those rights. For the reasons stated below, the defendant's motion for summary judgment is granted in part and denied in part.

II. DISCUSSION

Rule 56 of the Federal Rules of Civil Procedure states that summary judgment shall be granted if "there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The burden is on the moving party to demonstrate an absence of material factual dispute. Heyman v. Commerce and Industry Insurance Co., 524 F.2d 1317, 1320 (2d Cir.1975). It is incumbent upon the court in deciding whether there is any genuine factual issue to resolve all ambiguities and draw all reasonable inferences against the moving party. Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 115 (2d Cir.1984); EEOC v. Home Insurance Co., 672 F.2d 252, 257 (2d Cir.1982).

A. Copyright

The copyright laws protect original works of authorship, "that is, the author's tangible expression of his ideas." Mazer v. Stein, 347 U.S. 201, 214, 74 S.Ct. 460, 468, 98 L.Ed. 630 (1954). Copyright protection arises when a work is created and gives the author certain exclusive rights for a limited period of time. The requirements for, and duration of, copyright protection vary, depending on the law in effect when a work was created. The current Copyright Act, 17 U.S.C. §§ 101-914 (1982 & Supp. II 1984), was enacted October 19, 1976 (the "1976 Act"), and became effective January 1, 1978, long after the works at issue in this action were created. Consequently, our examination of copyrights for the Amos `n' Andy radio and televisions shows must focus on the Copyright Act of 1909 (the "1909 Act"). See Walt Disney Productions v. Air Pirates, 581 F.2d 751, 754 (9th Cir.1978), cert. denied sub nom. O'Neill v. Walt Disney Productions, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979).

Under the 1909 Act, an author could secure copyright by publishing a work with the required copyright notice. 1909 Act § 9.² He could then obtain registration of his copyright by depositing two copies of the work with the Copyright Office. 1909 Act §§ 10, 12.³ If the author never reproduced his work for sale, he could secure copyright registration by depositing one copy of the work with the Copyright Office along with his claim of copyright. 1909 Act § 11.⁴ This statutory copyright endured for twenty-eight years, and was renewable for an additional twenty-eight years. 1909 Act § 23.⁵ Common law copyright protected a work indefinitely if it remained unpublished and unregistered. 1909 Act § 2.⁶ Under the 1976 Act, all common law copyrights were converted to statutory copyrights as of January 1, 1978. They now expire at a fixed time, but no earlier than December 31, 2002. 17 U.S.C. § 303 (1982). Publication without copyright notice divested an author of all protection and cast the work into the public domain. See 1 M. Nimmer, Nimmer on Copyright § 4.01B at 4-5 (1985) (hereafter "Nimmer").

The concept of "publication" is pivotal in determining copyright validity under the 1909 Act. However, that statute never explictly defines publication. See 1 Nimmer § 4.04 at 4-17. As we attempt to unravel the gordian knot of the claims and counterclaims herein, we will further explore this "arcane and unsettled area of law." American Vitagraph, Inc. v. Levy, 659 F.2d 1023, 1026 (9th Cir.1981).

The plaintiff has asked for a declaration of his rights regarding the Amos `n' Andy radio shows broadcast between 1928 and 1948. However, the defendant asserts that the plaintiff has infringed its copyrights in the radio shows after 1948, and the Amos `n' Andy television programs. Since different issues arise as to the copyrights in these three groups of works, we will address each separately.

1. The 1928-1948 Radio Shows

The plaintiff claims that the Amos `n' Andy radio programs from March 1928, through March 1948, are in the public domain and that CBS has no proprietary rights in any part of these programs. CBS concedes that the scripts of these programs are in the public domain because, although registered for copyright by the show's creators, Gosden and Correll, the copyright registrations were never renewed. CBS contends, however, that the broadcasts of these early radio shows were never "published" and remain protected by common law copyright, converted to statutory copyright under the 1976 Act.

Public performance of a work is not considered a publication that divests an author of copyright protection. See 1 Nimmer § 4.08A. "The rendering of the performance before the microphone cannot be held to be an abandonment of ownership to it by the proprietors or a dedication of it to the public at...