University of Notre Dame Du Lac v. Twentieth Century-Fox Film Corp., CENTURY-FOX

• Decision Date: 18 March 1965
• Docket Number: CENTURY-FOX
• Citation: 15 N.Y.2d 940,207 N.E.2d 508,259 N.Y.S.2d 832
• Parties: , 207 N.E.2d 508, 145 U.S.P.Q. 98 UNIVERSITY OF NOTRE DAME DU LAC et al., Appellants, v. TWENTIETHFILM CORPORATION et al., Respondents.
• Court: New York Court of Appeals Court of Appeals

Page 832

259 N.Y.S.2d 832

15 N.Y.2d 940, 207 N.E.2d 508, 145

U.S.P.Q. 98

UNIVERSITY OF NOTRE DAME DU LAC et al., Appellants, v. TWENTIETH CENTURY-FOX FILM CORPORATION et al., Respondents.

Court of Appeals of New York.

March 18, 1965.

David W. Peck, John Dickey and John S. Allee, New York City, for appellants.

Frederick W. R. Pride, Samuel I. Rosenman, Leo P. Larkin, Jr., Stanley Godofsky, Max Freund and Gilbert S. Edelson, New York City, for Twentieth Century-Fox Film Corp. and others, respondents.

William C. Scott and Donald W. Smith, New York City, for Doubleday & Company, Inc., and others, respondents.

Emanuel Redfield, New York City, for New York Civil Liberties Union, amicus curiae.

Horace S. Manges, Jacob F. Raskin and Marshall C. Berger, New York City, for American Book Publishers Council, Inc., amicus curiae.

Order affirmed, with costs upon the opinion at the Appellate Division.

DYE, FULD, VAN VOORHIS and BERGAN, JJ., concur.

BURKE, J., dissents in the following opinion in which SCILEPPI, J., concurs.

DESMOND, C. J., taking no part.

BURKE, Judge (dissenting).

Plaintiffs appeal from an order of the Appellate Division reversing an order of Special Term and dismissing the complaint for failure to state a cause of action and vacating an injunction pendente lite granted by Special Term. The complaint was dismissed on a motion directed to the face of the complaint. ¹

The complaint sets forth two causes of action. The first alleges (i) illegal misappropriation and commercial exploitation for defendants' private profit the name, symbols, football team, high prestige, reputation and good will of the University of Notre Dame with consequent dilution of their high value ² in both the book and film 'John Goldfarb, Please Come Home' and (ii) public confusion and deception in believing that Notre Dame is connected with the motion picture and the book. The second cause of action alleges the use of the president's name and identity by defendants, for purposes of trade and without his consent, in violation of his rights under sections 50 and 51 of the Civil Rights Law, Consol.Laws, c. 6.

The dismissal of the first cause of action for commercial exploitation rests on two grounds. First, the Appellate Division has concluded on a motion to dismiss that plaintiff has no basis for showing any possible inference of 'connection or benefit to the institution', ³ citing Cornell Univ. v. Messing Bakeries, 285 App.Div. 490, 492, 138 N.Y.S2d 280, 282, affd. 309 N.Y. 722, 128 N.E.2d 421. Secondly, it has decided without citing a precedent that, putting aside the First Amendment issue, the doctrine of 'unfair competition' is not applicable because 'the work is a form of expression' "a form of social and literary criticism." The Appellate Division concedes that section 397 of the General Business Law, Consol.Laws, c. 20 (added by L.1961, ch. 438) prohibits the use of the university's name for advertising purposes or for purposes of trade but takes the view that a 'situation like the present was remote from the Legislature's contemplation.'

The second cause of action brought under section 51 of the Civil Rights Law is dismissed on the ground that, although the publisher conceded that the use of Father Hesburgh's name in the book is an essential 'character', it is, in the opinion of the Appellate Division, a nonactionable 'incidental' use and the use and representation of the same identity of character in the motion picture is either 'incidental' or not a 'use of the name'. ⁴

The Appellate Division's decision is wrong on all points: (1) it ignores the elementary rule of law governing motions directed to the face of the complaint; (2) it misreads the decision of this court in the Cornell case (supra); (3) it eschews the record and the facts in the record when it concludes no one would believe there was a connection with the university and in finding a problem of 'freedom of expression'; (4) contrary to precedent it limits the scope of sections 50 and 51 of the Civil Rights Law, and (5) it misconstrues section 397 of the General Business Law by creating an exemption when the Legislature expressly refused to allow any exemptions.

On the motion to dismiss the first cause of action, the defendant Fox stated it was not necessary to view the picture as they were moving on the face of the complaint. This, of course, was correct as all the allegations set forth in the complaint and their interpretation of the exhibits attached thereto must be deemed to have been proven when such a motion is considered. '(W)e are required to assume the truth of plaintiff's allegations of fact; 'every intendment and fair inference is in favor of the pleading' and if 'in any aspect upon the facts stated in plaintiff is entitled to a recovery, the motion should be denied.' Dyer v. Broadway Central Bank, 252 N.Y. 430, 432-433, 169 N.E. 635, 636.' (Sutton v. Hearst Corp., 277 App.Div. 155, 156, 98 N.Y.S.2d 233, 234.) Since the plaintiff Notre Dame, a university possessing a commercial property right well known to movie goers (n. 2, supra), is alleging that there is a dilution of the value of this property right brought about by the unauthorized use of its symbols, the Appellate Division Justices could not shut off their inquiry in such summary fashion.

To us it is obvious that, because defendants have admittedly taken the name and symbols of Notre Dame and of its football team repeatedly throughout their productions, readers and viewers are likely to think Notre Dame was connected with the enterprise and that Notre Dame would be irreparably harmed thereby. Certainly, with the script calling for actual film clips of an actual Notre Dame team in action, the remarks in Sports Illustrated, and the admission of the producer (n. 2, supra), the question of whether rational readers or viewers could draw such an inference would be at least a triable issue. Indeed, considering the facts in Cornell Univ. v. Messing Bakeries (supra), the court in this case would be justified in issuing a permanent injunction, since a stronger reason for granting relief is presented here. In the Cornell case, the university agreed that the defendant could use the phrase 'Cornell Formula Bread' but no pennant, flag or other symbol indicative of a college. Defendant used the phrase 'Cornell Recipe Bread', eliminated the pennant and substituted a scroll. The university sued to enjoin the use of its name and the scroll, plus other relief not pertinent here. Special Term found that the university never granted permission to appropriate and use its name on and in connection with advertising material and that the defendant's appropriation and use of the name 'Cornell' was calculated to, and did in fact, deceive, mislead and confuse the public into believing that the university was associated with the defendant. The judgment at Special Term allowed the use of the phrase 'Cornell Formula Bread' but provided that no pennant, scroll, banner or similar device could be used. The Appellate Division modified to allow the use of the phrase 'Cornell Recipe Bread' and reversed the findings of fact set forth above. In lieu of the two reversed findings the Appellate Division made a new finding of fact as follows: 'Plaintiff promptly protested the use by the defendant of the name 'Cornell' and other marketing and advertising material; but on or about May 16, 1952, the plaintiff issued a memorandum of that date covering the use by the public of a bread formula and prescribing the terms and conditions under which the formula could be attributed to the plaintiff and the name 'Cornell' used in the promotion and sale of the bread; and the defendant's use of the name 'Cornell Recipe Bread' at the time of the commencement of this action complied substantially with the terms and conditions of such memorandum, except that defendant used a scroll as background for the name 'Cornell,' and such use of a scroll was contrary to such memorandum and objectionable as indicative of the plaintiff university.'

When the Appellate Division reverse specific findings of fact and makes new findings, as it did in the Cornell case, it becomes the duty of this court to determine which findings are supported by credible evidence. (Roberts v. Fulmer, 301 N.Y. 277, 281, 93 N.E.2d 846, 847.) In this court we recognized that the university had a property right in its name, but obviously had relinquished a part of this right. Although the university had allowed the use of its name on a product sold to the public, we decided, it could nevertheless impose conditions on that use. These conditions, we believe, should be strictly enforced for it is only by promising such adherence that the defendant obtained the right to use the name. Therefore, the Cornell case was not a palming off case. It is clear beyond any doubt that the court below erred in characterizing it as such. Again we must point out factors in Cornell which the Appellate Division here overlooked. In Cornell the trial court found that the appropriation of the Cornell name was calculated to and did deceive, mislead and confuse the public into believing that the university was associated with the defendant bakery. When the Appellate Division reversed this finding of palming off and deception, there was no difficulty in deciding the single issue that remained, viz., that the use of the symbols of a college or university were objectional as indicative of the plaintiff university and that such use should be enjoined.

While some would interpret Cornell as requiring a showing of public confusion as to the university's participation in the trade or commerce involved, the true basis of that decision rests upon defendant's failure to follow the strict terms contained in the memorandum granting defendant a restricted use; liability attached merely because defendant used a scroll with the name 'Cornell' rather than the approved mention of the name. In short, Cornell...