Varconi v. Unity Television Corp.

• Decision Date: 19 March 1958
• Parties: , 117 U.S.P.Q. 107 Victor VARCONI, Plaintiff, v. UNITY TELEVISION CORPORATION and General Electric Company, Defendants.
• Court: New York Supreme Court

Page 201

173 N.Y.S.2d 201

11 Misc.2d 191, 117 U.S.P.Q. 107

Victor VARCONI, Plaintiff, v. UNITY TELEVISION CORPORATION and General Electric Company, Defendants.

Supreme Court, Special and Trial Term, New York County, Part XV.

March 19, 1958.

Cohen & Sandomire, New York City, for plaintiff. Robert J. Feldman, New York City, of counsel.

Irving Brand, New York City, for defendant Unity T. V. Corp.

Emil Peters, Schenectady, for defendant G. E. Co. Irving Brand, New York City, of counsel.

LOUIS J. CAPOZZOLI, Justice.

The plaintiff has brought this action for an injunction and for damages arising out of the alleged invasion by defendants of the plaintiff's literary and property rights in a dramatic composition. Plaintiff also sought an accounting, but has withdrawn this claim.

Some time prior to February 21, 1934, plaintiff conceived and wrote an original story, which he called 'Menace'. On the aforementioned date he entered into a written contract with Sound City Film, Ltd., in England, whereby, amongst other things, it was agreed that the latter was to have:

'1. * * * the sole and exclusive license for fourteen years from the date hereof in all parts of the world to make or authorize the making of cinematograph films of or based on or adapted from the said story or any part thereof and thereby mechanically to reproduce the action, incidents, sounds and words of the said story or any part thereof and to authorize such reproduction and to represent, exhibit and perform, by mechanical means, the action, incidents, sounds and words of the said story or any part thereof and to authorize such representation, exhibition and performance. The sole and exclusive license during the said period of fourteen years, from the day of the date hereof, in all parts of the world, to sell exhibit, lease, let on hire, rent or otherwise dispose of, deal with or exploit all films (be the same synchronized, sound, singing, talking, orchestrated films or silent) hereafter to be manufactured of or based on or adapted from the same story. * * *

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'6. The licensees shall be at liberty to publish and exhibit in any languages a brief synopsis or description of the said story as originally written or as adopted (as the case may be) for the said sound film and to use any lines or excerpts from the said story for titles and/or sub-titles and to publish in serial form in any daily or weekly newspaper or magazine, the story of 'Menace' with illustrations from the film. * * *

'7. The author grants the licensees the right to use the said story for the purpose of broadcasting by any wireless or telephonic methods.

'8. The licensees shall be entitled to exploit and deal with the said film in all parts of the world, as they may in their absolute discretion determine, whether for picture houses, theatres, broadcasting, television, or any other purpose.'

Plaintiff did not copyright the story either in England or in the United States. His action is based on an alleged violation of his common-law copyright.

At the time that this contract was entered into between the plaintiff and Sound City Film, Ltd., it was also agreed that the plaintiff was to play the leading role in the film. Accordingly, a motion picture film was made in 1934 from the story of the plaintiff, with the latter playing the leading role, and the picture was exhibited in various places in England and in the United States. In fact, the evidence indicates that the plaintiff became aware of and knew, as early as 1936, that the film had been exhibited in the United States.

The evidence further indicates that there was no action on the part of the plaintiff for over twenty years after the execution of the aforementioned agreement. Under the terms of the agreement the plaintiff was to, and did, receive £500 (five hundred pounds), in three installments, and the last one was paid in April, 1934. No further money was to be paid to this plaintiff.

In 1949 he learned of the continued showing of this film on television in the City of New York and he did nothing about enforcing his rights which he claims to have had. In fact, nothing was done by this plaintiff until August, 1954, at which time he protested the use of this film on television in a letter addressed to the defendant, Unity Television Corporation, and laid claim to being the sole and exclusive owner of the film and rights arising therefrom.

Concededly, the defendant, Unity Television Corporation, licensed the picture to many television stations in this country during the period from 1951 to 1954. At the trial evidence was adduced showing an open and notorious dealing with this film on the part of various individuals, although there is no clear showing as to who was the first individual with whom Sound City dealt in order to authorize the first showing of this film in the United States. As has been already indicated, the plaintiff did not at any time secure a statutory copyright. His action is based on the alleged violation of his common-law copyright.

At common law, independently of statute, an author has a property right in his intellectual production before it has been published and is entitled to redress against anyone who interferes with that right. Jewelers' Mercantile Agency, Ltd., v. Jewelers' Weekly Publishing Co., etc., 155 N.Y. 241, 49 N.E. 872, 41 L.R.A. 846; Daly v. Walrath, 40 App.Div. 220, 57 N.Y.S. 1125; Fashion Originators Guild v. Federal Trade Commission, 2 Cir., 114 F.2d 80; Holmes v. Hurst, 174 U.S. 82, 19 S.Ct. 606, 43 L.Ed. 904.

However, the rule is well established that a general publication of a literary or other intellectual work, by consent of the author, terminates all common-law rights and, therefore, any person may publish and use it for his own benefit, unless it is protected by statutory copyright. This is so regardless of the intent of the author and neither can he regulate nor control the manner of republication or use by others. Jewelers' Mercantile Agency, Ltd., v. Jewelers' Weekly Publishing Co., etc., supra; Van Veen v. Franklin Knitting Mills, 145 Misc. 451, 260 N.Y.S. 163; Universal Film Co. v. Copperman, 2 Cir., 218 F. 577; Daly v. Walrath, supra; Fashion Originators Guild v. Federal Trade Commission, supra; Holmes v. Hurst, supra; Hirsch v. Twentieth Century-Fox Film Corp., 207 Misc. 750, 144 N.Y.S.2d 38; 18 C.J.S. Copyright and Literary Property § 13; Press Publishing Co. v. Monroe, 2 Cir., 73 F. 196, 51 A.L.R. 353.

In the case of Jewelers' Mercantile Agency, Ltd., v. Jewelers' Weekly Publishing Co., supra, plaintiff, the Jewelers' Mercantile Agency, a corporation which collected information of the business and credit of persons in the jewelry trade, printed such information twice a year in a 'reference book', which it furnished to such persons subscribing therefor, under a contract which designated the transaction as a 'loan' of the volumes and provided that the information supplied should be confidential and should not be disclosed; that the title to the books should remain in the agency, that the books should be returned upon expiration of the subscription and that the agency might terminate the contract and take back the books on returning the amount of the unexpired subscriptions. The defendant Jewelers' Weekly Publishing Co. appropriated from the agency's reference book certain...