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

• Decision Date: 17 December 1964
• Docket Number: CENTURY-FOX
• Citation: 44 Misc.2d 808,255 N.Y.S.2d 210
• Parties: , 144 U.S.P.Q. 107 UNIVERSITY OF NOTRE DAME DU LAC and Theodore M. Hesburgh, Plaintiffs, v. TWENTIETHFILM CORPORATION, Twentieth Century-Fox Distributing Corporation, Twentieth Century-Fox International Corporation, Doubleday & Company, Inc., Fawcett Publications, Inc., and Fawcett World Library, Defendants.
• Court: New York Supreme Court

Page 210

255 N.Y.S.2d 210

44 Misc.2d 808, 144 U.S.P.Q. 107

UNIVERSITY OF NOTRE DAME DU LAC and Theodore M. Hesburgh, Plaintiffs, v. TWENTIETH CENTURY-FOX FILM CORPORATION, Twentieth Century-Fox Distributing Corporation, Twentieth Century-Fox International Corporation, Doubleday & Company, Inc. Fawcett Publications, Inc., and Fawcett World Library, Defendants.

Supreme Court, Special Term, New York County, Part I.

Dec. 17, 1964.

Sullivan & Cromwell, New York City (David W. Peck, John W. Dickey, John S. Allee, New York City, of counsel), for plaintiffs.

Satterlee, Warfield & Stephens, New York City (Wm. C. Scott, David Asch, New York City, of counsel), for defendants Doubleday & Co. and Fawcett Publications, Inc.

Royall, Koegel & Rogers, New York City (Frederick W. R. Pride, Leo P. Larkin, Jr., Guy C. Quinlan, New York City, of counsel), for defendants Twentieth Century-Fox Film Corp., Twentieth Century Film Distributing Corp. and Twentieth Century-Fox International Corp.

Stuart H. Aarons, New York City, for amicus curiae Theatre Owners of America, Inc.

HENRY CLAY GREENBERG, Justice.

Plaintiffs University of Notre Dame du Lac (hereinafter referred to as 'Notre Dame' or 'the University') and its president, Father Theodore M. Hesburgh, have invoked the equitable jurisdiction of this Court to enjoin permanently the defendants Twentieth Century-Fox Film Corporation (hereinafter referred to as 'Twentieth Century-Fox'), Twentieth Century-Fox Distributing Corporation, Doubleday & Company, Inc. (hereinafter referred to as 'Doubleday'), Fawcett Publications, Inc. and Fawcett World Library (the last two defendants hereinafter referred to jointly as 'Fawcett'):

(1) 'from distributing and releasing a motion picture entitled 'John Goldfarb, Please Come Home' and from advertising and promoting said motion picture by means of the paperback edition of the book of the same title, and published by defendant Fawcett by arrangement with defendant Doubleday, and'

(2) 'from further publication, distribution and circulation of the novel 'John Goldfarb, Please Come Home' in either paperback or hard cover form'.

At this time, precipitated by the imminent release of the motion picture for public showing--Christmas Day, 1964-plaintiffs seek an injunction pendente lite and defendants cross-move for an order pursuant to CPLR 3211(a)(7) dismissing the complaint upon the ground that the pleading fails to state a cause of action on behalf of either plaintiff. Defendant Twentieth Century-Fox and its affiliates also cross-move for an order pursuant to CPLR 3211(a)(10) dismissing the complaint upon the ground that Parker Organization, Inc. and Orchard Productions, Inc., both California corporations, persons who should be parties defendant to this action, have not been joined herein, and that this Court should not proceed those asserted against the remaining defendants. Defendant Doubleday claims asserted against Twentieth Century-Fox and its affiliates from those asserted against the remaining defendants. Defendant Doubleday also cross-moves for an order pursuant to CPLR 3211(a)(5) dismissing the complaint upon the ground that each of the causes of action is barred by the Statute of Limitations. Upon leave of the Court, the Theatre Owners of America, Inc., was permitted, amicus curiae, to argue and to submit an affidavit in opposition to the plaintiffs' motion.

Plaintiff University of Notre Dame is a private Catholic university of renowned high prestige and educational distinction, chartered in 1844 by a special act of the Indiana legislature. As a private institution, the University is dependent for the great part of its financial support upon gifts by alumni, industrial corporations, trustees and the public and upon grants by private foundations and the United States. Judicial cognizance is taken of the years of endeavor to build the University's jealously guarded reputation and of the relationship between the bestowing of gifts and financial grants upon the University and its reputation.

The name and symbols of Notre Dame are also of immense commercial value to the University. Where appropriate, Notre Dame has licensed the use of its name and symbols for profit.

With respect to the motion picture industry, the history of the University reveals a consistent pattern of protection of the worth of its name and reputation on the part of Notre Dame and of respect for the property rights of the University on the part of members of the industry. (This appears to be the practice of the industry and of institutions like Notre Dame, as evidenced by the Affidavit of Lt. Col. William C. Bishop of the United States Military Academy, West Point, New York, with regard to the filming of 'The Long Gray Line.')

In 1931, Universal Pictures sought and was granted permission to use the University's name; in 1939, Warner Brothers was licensed by the University to use the latter's name.

More recently, in 1955, Columbia Pictures Corporation and the University entered into a contract whereby the film company was granted an exclusive four-year option to avail itself of the University's name and other specific property for the purpose of making a film. The contract provided for the approval of the University of the nature of the photoplay and other corollary factors. For its part, Columbia Pictures Corporation 'agreed to pay Notre Dame 'all of the gross receipts * * * of the picture to be made hereunder in excess of twice the negative cost of the picture until such time as Notre Dame shall have received out of the gross receipts the sum of $250,000' and thereafter, 'Notre Dame shall be entitled to receive twenty per cent (20%) of the gross receipts of the picture.'' (Affidavit of Father Hesburgh, pp. 7-10 and Exhibit E.)

Guided by its anxiety over the possible injurious effect upon its reputation, the University, although destined to benefit financially from the arrangement, rejected, in May 1962, Columbia Pictures Corporation's request for authorization to permit references to Notre Dame and its team in the proposed motion picture entitled, 'John Goldfarb, Please Come Home.'

Subsequent to this refusal by Notre Dame to authorize any references to its name, symbols or representatives, Columbia Pictures Corporation discarded any intentions to produce the motion picture. Thereafter Twentieth Century-Fox, with less business scruples and with utter disregard for the rights of another, in conjunction with Steve Parker, individually, Parker Organization, Inc., and another California corporation, filmed the subject motion picture. There is a dispute as to whether Mr. Steve Parker, the later partner of Twentieth Century-Fox in the production of the photoplay 'John Goldfarb, Please Come Home', was apprised of the University's objections to the use of its name in connection with the screenplay. In any event, and in this Court's judgment, it is not overly important. Twentieth Century-Fox should have known, as a reasonable producer, that it could not infringe upon another's property, without its consent.

Plaintiff Notre Dame, by its president, avers that the first knowledge it had of either the filming of the movie or the publication of a hard cover book by Doubleday, based on the same screenplay and bearing the same title, was obtained in June 1964 (although, concededly, the latter was published on July 5, 1963). Immediately after it first became aware of the movie and of the book, the University notified Twentieth Century-Fox of its objections to the appropriation and use of its name in connection with the movie production. No particular action was then taken with respect to the book, the rationale being that, 'While the book was actionable * * *, it was apparent that by itself it would have no significant circulation and would not be of a consequence worth the bother of any action.' (Affidavit of Father Hesburgh, page 12.)

Thereafter, an interim period of correspondence, telephone calls and conferences ensued, during all of which time the University was adamant in its objections. After several of its trustees had viewed the film at a 'sneak preview' showing in New York, the University retained counsel to institute the necessary legal measures with regard to the picture, the hard cover book published by Doubleday, and a pocket book edition, printed by Fawcett in November 1964, the front and back covers of which picture the leading actress and actors and bear the legend 'Now the comedy smash of the 20th Century (20th Century-Fox, of course) and starring Shirley MacLaine, Peter Ustinov and Richard Crenna'.

'John Goldfarb, Please Come Home' depicts the efforts of the Arab King of Fawzia who blackmails a captive Jewish American U-2 pilot and former All-American halfback into forming and coaching the Fawzian football team so that the team may challenge and defeat Notre Dame, and thus wreak vengeance for the refusal of Notre Dame to qualify the King's son as a member of its football team. The leading female is a 'Strife' magazine reporter who is assigned to write the story of the King's harem and who 'joins' the harem in order to get her story.

In an early scene, Ammud, the King's son, wearing a green robe bearing the inscription 'Go, Varsity', tells his father that he has failed to make the Notre Dame football team, 'Because I not Irish! They not want Arab! They Fighting Irish! Want whole team Irish! Want--!' Fawz, 'bellowing in a fury', roars, 'Irish! I-rish! Da Irish better dan Arab? Better dan Arab Prince!?' The King then says, 'I fix dos lousy Irish! I fix dem, I fix dem, I fix dem!' (Screenplay, page 39.)

The United States State Department becomes involved in the King's plot, for the King informs the Department that he will renew a lease on an air base established in his country upon the sole condition that the State Department arrange a game between the football teams of Fawz University and the University of Notre Dame.

Officials of the United...