Tomlin v. Walt Disney Productions

• Decision Date: 21 June 1971
• Citation: 18 Cal.App.3d 226,96 Cal.Rptr. 118
• Court: California Court of Appeals Court of Appeals
• Parties: , 171 U.S.P.Q. 415 Pinky TOMLIN, Plaintiff and Appellant, v. WALT DISNEY PRODUCTIONS, Defendant and Respondent. Civ. 37302.

Page 118

96 Cal.Rptr. 118

18 Cal.App.3d 226, 171 U.S.P.Q. 415

Pinky TOMLIN, Plaintiff and Appellant, v. WALT DISNEY PRODUCTIONS, Defendant and Respondent.

Civ. 37302.

Court of Appeal, Second District, Division 2, California.

June 21, 1971.

Hearing Denied Aug. 18, 1971.

Hillel Chodos, Beverly Hills, for plaintiff and appellant.

Hill, Farrer & Burrill, William S. Scully, Jr., Stanley E. Tobin, E. Mae Amos, Jr., Los Angeles, for defendant and respondent.

COMPTON, Associate Justice.

In 1937, Pinky Tomlin (hereinafter referred to as Tomlin) wrote and subsequently performed a copyrighted song entitled 'The Love Bug Will Bite You (If You Don't Watch Out).'

In that same year Tomlin entered into a standard type contract with a music publisher whereby he assigned his rights in the composition to the publisher in return for royalties. Said contract was renewed in 1964. Neither the original publisher nor its successor is a party to this action.

The attribution of strong desires and emotions to the bite of a legendary 'bug' ¹ had been part of the American idiom long prior to 1937 and in fact several persons had previously copyrighted musical and dramatic compositions with the title 'Love Bug.' Tomlin's composition, however, unquestionably enjoyed a greater success and popularity than any other similarly titled composition.

In 1969, Walt Disney Productions (hereinafter referred to as Disney), after extensive advance publicity, released for exhibition throughout the United States and foreign countries a motion picture entitled 'The Love Bug.' This screenplay featured a Volkswagen automobile with human attributes. At this point in history there can be no question but what the term 'Bug' had become almost synonymous with the Volkswagen automobile.

Shortly after release of the picture, Tomlin commenced an action alleging unfair competition and seeking general and exemplary damages as well as an injunction to prevent Disney's further use of the title 'The Love Bug.'

Tomlin's claim of a protectible property right in the title 'The Love Bug' is premised on the contention that, although the title to his song was and is 'The Love Bug Will Bite You (If You Don't Watch Out),' through popular usage it became known and identifiable to the public by the shorter title of 'The Love Bug.' He further contends that as a result of the song's popularity as evidenced by extensive sales of sheet music and recordings and extensive use by the broadcasting media and well known musical performers, the title came to be singularly identified with the Song ² and thus acquired a 'secondary meaning.'

The title to a literary or musical composition is not protectible by copyright, however, the owner of such a composition has been held to acquire a property right in the title when that title has acquired a 'secondary meaning' identifying it in the public mind with the literary work. (23 A.L.R.2d 302, § 19; Jackson v. Universal Internat. Pictures, § 36 Cal.2d 116, 222 P.2d 433.)

On the other hand, in Curtis v. 20th Century-Fox Film Corp., 140 Cal.App.2d 461, at 469, 295 P.2d 62, 67, the court said: 'Anyone may use a title if there is no secondary significance. Unfair competition consists in palming off one's goods as those of another. The mere use of a substantially similar title, if not used in such manner as to induce the public to believe that the work to which it is applied is the identical thing which it originally designated, does not constitute unfair competition.'

The matter is before us as the result of the granting of a summary judgment in favor of Disney in which the trial court found that (1) Tomlin was not the real party in interest, having made an absolute assignment of his rights to the title of his composition, (2) no likelihood of public confusion could exist as a matter of law between Tomlin's song and Disney's motion picture, and (3) that Federal copyright legislation has preempted the power of California to grant the relief Tomlin seeks.

The granting of a summary judgment '* * * is addressed to the sound discretion of the trial court and in the absence of a clear showing of abuse thereof, the exercise of that discretion will not be disturbed on appeal. Therefore, the issue on appeal is whether the trial court abused its discretion in granting the motion. A motion for a summary judgment raises the issue of whether any triable issues of fact exist. (Desny v. Wilder, 46 Cal.2d 715, at p. 725, 299 P.2d 257).' (Hicks v. Bridges, 152 Cal.App.2d 146, at 148, 313 P.2d 15, 16.)

The trial court had before it at the hearing on the motion the pleadings, declarations of the parties, plaintiff's deposition and answers to interrogatories.

Two of the three grounds upon which the trial court based its judgment present questions of law. These are that the Federal law has preempted the field and that Tomlin is not a real party in interest.

In the companion cases of Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661, and Compco Corp. v. Day-Brite Lighting, 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669, the United States Supreme Court held that when an article is unprotected by patent or Copyright, a state cannot, through the application of its laws on unfair competition, prohibit the copying of an article nor award damages for such copying.

In each of these cases the district court found plaintiff's patent to be invalid but, by applying state law, awarded damages for and an injunction against unfair competition. The Supreme Court reversed.

The essential rationale of these decisions is that the supremacy clause of the United States Constitution is offended where the states, under the guise of guarding against unfair competition, in effect grant perpetual monopolistic protection to items which fail to qualify for the limited protection afforded by Federal patent and copyright laws.

In Sears and Compco the court was dealing with products that lacked sufficient inventiveness to qualify for patent protection. However, as noted above the court referred to articles unprotected by either patent or Copyright, and the impact of those decisions on cases such as the one at bar has been recognized.

'Protection of titles under a theory of unfair competition has been rendered seriously questionable by the recent Supreme Court case, Compco Corp. v. Day-Brite Lighting, * * *

'The analogy to unfair competition protection of titles is obvious. As the lighting fixtures in Compco were not subject to patent protection, so titles are not subject to copyright protection. If absence of federal protection of the former constitutes a Congressional policy to permit copying then the same may be said of the latter. Moreover, proof of the element of secondary meaning in title cases may not take them out of the ambit of federal preemption since in Compco the Court accepted the lower court's finding of secondary meaning as to the lighting fixtures but nevertheless held that 'if the design is not entitled to a design patent or other federal statutory protection, then it can be copied at will. " (Nimmer on Copyright (1970 Supp.) § 34, pp. 142, 143.)

Seymour M. Bricker, in an article entitled 'Thirty Months After Sears and Compco,' published in the Bulletin of The Copyright Society of the U.S.A., Vol. 14, page 296 (1967), aptly observes 'The Supreme Court tips the scales in favor of free competition. In Sears and Compco, the Court treats the patent and copyright statutes as exceptions to the policy of a free and competitive economy, and considers that, in a desire to curb predatory business practices, the states may not impose liability for, or forbid, copying of works not protected by the federal statutes. Lawyers in the entertainment field tend to think of creator and user. Sears and Compco bring to mind the obvious--that in the patent and copyright fields, there is a third party, namely, the public.'

Admittedly, titles are not presently copyrightable under Federal law. It is clear, however, that Congress has the power to protect literary titles under either the Copyright or Commerce clauses of the United States Constitution and has simply elected not to do so. Can it be inferred from this Congressional inaction that the field is totally open or totally closed to protective action by the states?

Some clue to the answer is provided by the following language from Sears, 376 U.S. at p. 231, 84 S.Ct. 784 at p. 789.

'An unpatentable article, like an article on which the patent has expired, is in the public domain and may be made and sold by whoever chooses to do so.'

In Compco, supra, at 376 U.S. p. 237, 84 S.Ct. 779 at p. 782, the court said:

'To forbid copying would interfere with the federal policy, found in Art. I, § 8, cl. 8, of the Constitution and in the implementing federal statutes, of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain.'

Also in the Bulletin of The Copyright Society, Supra, at page 300, the author states: 'To distinguish between copyrightable and uncopyrightable writings would be contrary to the policy of the Constitution and the Copyright Act. Such a distinction would favor the proprietor of an uncopyrightable work by permitting perpetual protection.'

Columbia Broadcasting System, Inc. v. DeCosta, 1 Cir., 377 F.2d 315, at 319, asks and answers the question as follows:

'Does the language in Compco, 'whatever the federal patent and copyright laws leave in the public domain,' refer to creations that Congress has deliberately chosen not to protect or more broadly to those it has simply not protected, whether by choice or by chance? In the case of patents the two questions are coterminous, for Congress had deliberately chosen not to protect inventions lacking the element of originality, and an invention is thus either patentable or unprotectible. In the case of 'writings' there is no such universal test of qualification. But Congress has established a...