Warner Bros. Pictures v. Majestic Pictures Corp., 169.

• Decision Date: 16 April 1934
• Docket Number: No. 169.,169.
• Citation: 70 F.2d 310
• Parties: WARNER BROS. PICTURES, Inc., v. MAJESTIC PICTURES CORPORATION et al.
• Court: U.S. Court of Appeals — Second Circuit

70 F.2d 310 (1934)

WARNER BROS. PICTURES, Inc., v. MAJESTIC PICTURES CORPORATION et al.

No. 169.

Circuit Court of Appeals, Second Circuit.

April 16, 1934.

Thomas & Friedman, of New York City (Morris Ebenstein, of New York City, of counsel), for complainant-appellant.

Krellberg & Fitzsimons, of New York City (Alfred S. Krellberg and Arthur J. Homans, both of New York City, of counsel), for defendants-appellees.

Before MANTON, AUGUSTUS N. HAND, and CHASE, Circuit Judges.

AUGUSTUS N. HAND, Circuit Judge.

This is an appeal from an order denying a motion to enjoin the defendants pendente lite from producing a talking motion picture under the title "Gold Diggers of Paris." "The Gold Diggers" was the title of a play by Avery Hopwood which was produced by David Belasco at the Lyceum Theater in New York, and continued for 90 successive weeks after opening on September 30, 1919. Subsequently the play was taken on tour through the United States, and 528 performances were given between September 13, 1921, and April 21, 1923. There were gross receipts from the play of more than $1,900,000, and much money was expended in advertising. Even since April, 1923, there have been many performances by stock companies, some as late as 1932, under the title "The Gold Diggers."

In 1923 the complainant acquired the exclusive silent motion picture rights in "The Gold Diggers," and during that year produced a silent motion picture based on this play and distributed the picture under the same title. The gross receipts derived from licensing theater owners to exhibit it amounted to $470,000.

In 1929 complainant purchased the talking motion picture rights in "The Gold Diggers," and produced a talking motion picture based on the play at an expense of $725,000, which it opened at the Winter Garden in New York on August 30, 1929. This picture was exhibited in over 6,000 theaters in the United States and Canada under the title "Gold Diggers of Broadway." The total receipts from licensing it in the United States and Canada were $2,540,298.47. It was seen by millions of people, and complainant expended upwards of $74,000 in advertising it. Complainant received $1,395,344.54 upon licenses outside of the United States and Canada. Such was the success of this picture that complainant determined to produce a new talking motion picture version of the play under the title "Gold Diggers of 1933," for the production of which $199,983 had been expended at the time the motion for the preliminary injunction was made. In 1933 defendants produced a picture under the title "Gold Diggers of Paris," having certain characters similar to those in Hopwood's play.

The original play is said to have dealt with the lives and actions of two young women who had come to New York and there joined the chorus of a musical comedy. One of the young women who took the leading role was represented as having good moral instincts and as being somewhat dissatisfied with or uncomfortable in the life that she was leading. Her friend, who took the subordinate part and was responsible for the comedy element, was not so handicapped. She was decidedly the louder and more vulgar of the two, and was a low comedy character.

The complaint and the affidavits submitted in support of this motion for an injunction allege that the use of the title "Gold Diggers of Paris" was with intent to capitalize the good will and reputation of complainant and to deceive the public into associating defendants' motion picture with Avery Hopwood's play and complainant's motion pictures.

While the answer denied, upon information and belief, the allegations in the bill, the defendants meet the facts set up in the affidavits in no satisfactory way and say little more than that it is unethical to distribute more than one motion picture based on the same play within five years, and therefore unlikely that the complainant's picture "Gold Diggers of 1933" is based on the Hopwood play, for Warner Bros. Pictures, Inc., had distributed "Gold Diggers of Broadway" as recently as 1929-1932.

Enough appears in the affidavits to show that the complainant would be an infringer of the copyright of the original play of Avery Hopwood if it had not purchased the right to make silent and talking picture versions thereof. Perhaps, if the play and the scenarios for the pictures were before us, we might not reach this conclusion, but when it appears that Warner Bros. Pictures, Inc., went to the expense of buying the silent and talking rights, and the affidavits state that all the pictures were based on the play, and no showing has been made to the contrary, we must assume that the moving pictures were thus founded. Complainant's asserted right to an injunction is not, however, based on infringement of a copyright of the play, but on an unfair use of the words "Gold Diggers." A copyright of a play does not carry with it the exclusive right to the use of the title. National Picture Theatres v. Foundation Film Corp. (C. C. A.) 266 F. 208; Atlas Mfg. Co. v. Street & Smith (C. C. A.) 204 F. 398, 47 L. R. A. (N. S.) 1002; International F. Service Co. v. Associated Producers (D. C.) 273 F. 585; Glaser v. St. Elmo Co. (C. C.) 175 F. 276; Corbett v. Purdy (C. C.) 80 F. 901; Harper v. Ranous (C. C.) 67 F. 904; Osgood v. Allen, Fed. Cas. No. 10,603. But complainant, by its purchase of the right to produce silent and talking motion pictures of Hopwood's play and by its investment of capital and labor in the pictures founded upon it, has built up a valuable good will in a business of pictures of this particular type. The cinematograph productions which it has advertised and distributed under the title "Gold Diggers" and "Gold Diggers of Broadway" have become associated in the public mind all over the United States with the Hopwood play and the productions of Warner Bros. Pictures, Inc., and the title "Gold Diggers" has thus acquired a distinctive meaning in the motion picture field as descriptive of film versions of the Hopwood play produced by complainant. The...