Warner Bros. Pictures v. Columbia Broadcasting System

• Decision Date: 09 November 1954
• Docket Number: No. 13457.,13457.
• Citation: 216 F.2d 945
• Parties: WARNER BROS. PICTURES, Inc., a Corporation, and Alfred A. Knopf, Inc., a Corporation, Appellants, v. COLUMBIA BROADCASTING SYSTEM, Inc., a Corporation; William Spier; The Wildroot Company, Inc., a Corporation; Regis Radio Corporation, William Robert Tallman, Giles B. Doud, Joe Eisinger, Batten, Barton, Durstine & Osborn, Inc., and Dashiell Hammett, Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

216 F.2d 945 (1954)

WARNER BROS. PICTURES, Inc., a Corporation, and Alfred A. Knopf, Inc., a Corporation, Appellants, v. COLUMBIA BROADCASTING SYSTEM, Inc., a Corporation; William Spier; The Wildroot Company, Inc., a Corporation; Regis Radio Corporation, William Robert Tallman, Giles B. Doud, Joe Eisinger, Batten, Barton, Durstine & Osborn, Inc., and Dashiell Hammett, Appellees.

No. 13457.

United States Court of Appeals Ninth Circuit.

November 9, 1954.

Freston & Files, Ralph E. Lewis, Gordon L. Files, Los Angeles, Cal., for appellants.

Zissu & Marcus, Leonard Zissu, Abraham Marcus, New York City, Laurence Beilenson, William Berger, Beverly Hills, Cal., for appellee Hammett.

Crider, Runkle & Tilson, Los Angeles, Cal., for appellee Columbia Broadcasting Co.

Before STEPHENS and FEE, Circuit Judges, and CLARK, District Judge.

STEPHENS, Circuit Judge.

Dashiell Hammett composed a mystery-detective story entitled "The Maltese Falcon" which was published serially, and each installment was copyrighted by the publisher. Subsequently, Alfred A. Knopf, Inc., entered into a contract with the author to publish the work in book form, Knopf published the book and, in accord with the terms of the contract, copyrighted it.

In 1930, after publication in book form and after publication of all installments of the first serial thereof, Knopf and Hammett, designated as "Owners", for a consideration of $8,500.00, granted certain defined rights in and to The Maltese Falcon (called "writings" in the agreement) to Warner Bros., as "Purchaser".¹ Coincidentally, Knopf executed an instrument to Warner called "Assignment of Copyright"² for a nominal consideration. The text of the "assignment" shows on its face that it is not an assignment of the copyright but that it is a grant to Warner of specified rights to the use of the writings in The Maltese Falcon. Both the contract between Hammett-Knopf and Warner, and the "assignment" from Knopf, purport to grant to Warner certain defined and detailed exclusive rights to the use of The Maltese Falcon "writings" in moving pictures, radio, and television.

By the common law, the author of a writing possesses the sole and exclusive right to publish it, but upon and after the first publication the writing may be published by anyone including the author, since the writing has gone into the public domain. Bobbs-Merrill Co. v. Straus, 1908, 210 U.S. 339, 28 S.Ct. 722, 52 L.Ed. 1086; Bobbs-Merrill Co. v. Straus, 2 Cir., 1908, 147 F. 15, 15 L.R.A., N.S., 766; Harper & Bros. v. M. A. Donohue & Co., C.C. 1905, 144 F. 491. The copyright statute extends the author's sole and exclusive right in accordance with its terms and provisions. Constitution of the United States, Art. I, § 8, Clause 8; Title 17 U.S.C.A.; Bobbs-Merrill Co. v. Straus, 1908, 210 U.S. 339, 28 S.Ct. 722, 52 L.Ed. 1086; Bobbs-Merrill Co. v. Straus, 2 Cir., 1908, 147 F. 15, 15 L.R.A.,N.S., 766. In other words, it reserves the writing from the public domain for the effective period of the copyright. What we have just said is what is meant by courts when they say: "When the copyright comes in, the common law right goes out."

No question as to the legality of the copyright on The Maltese Falcon or to its continuing effectiveness through all times in suit, or to its complete beneficial ownership by Hammett and Knopf together, is in issue. Therefore, at the effective moment of the grants by Hammett and Knopf to Warner, the latter became possessed of the sole and exclusive right to the writing which is within the copyright, less all limiting terms of the grants. The grants are limited to defined uses in motion picture, talking pictures, radio, and television.

It is claimed by Warner that it acquired the exclusive right to the use of the writing, The Maltese Falcon, including the individual characters and their names, together with the title, "The Maltese Falcon", in motion pictures, radio, and television. The use of the title is not in issue, since the grant to Warner specifically includes it.

It is the position of Hammett and the other defendants, all of whom claim some interest under him, that the rights acquired by Warner are those specifically mentioned in the conveying or granting instruments, and that the exclusive right to the use of the characters and/or their names were not mentioned as being granted; that the instruments, properly construed, do not convey any exclusive right to the use of characters with or without names, hence Hammett could use them in other stories. However, if, by reason of the silence in the instruments as to such claimed rights, the instruments should be held to be ambiguous on this point, the custom and practice demonstrate that such rights are not customarily parted with by authors, but that characters which are depicted in one detective story together with their names are customarily retained and used in the intricacies of subsequent but different tales.

Hammett did so use the characters with their names and did contract with others for such use. In 1946 he used The Maltese Falcon characters including Sam Spade, the detective and the leading character in the Falcon, by name, and granted to third parties the sole and exclusive right, except their use in the Falcon, to use that character by name (later orally enlarged to include other characters of the Falcon) in radio, television, and motion pictures. Under such claimed rights, radio broadcasts of "Adventures of Sam Spade", including "The Kandy Tooth" were broadcast in weekly half-hour episodes from 1946 to 1950.

Warner claims infringement of copyright and "unfair use and competition" by such re-use and, as well, for infringement of parts of the story and the whole of the writing inclusive of characters and their names. Hammett and the other defendants deny infringement or unfair use and competition on any count, and Hammett requests the court to declare his rights in the premises. Knopf is a nominal party asking and claiming nothing, and is made a plaintiff under the right granted Warner in the Hammett-Knopf-Warner contract.

The trial court denied relief to Warner, declared Hammett's rights, and assessed costs against Warner, who appeals.

The instruments under which Warner claims were prepared by Warner Bros. Corporation which is a large, experienced moving picture producer. It would seem proper, therefore, to construe the instruments under the assumption that the claimant knew what it wanted and that in defining the items in the instruments which it desired and intended to take, it included all of the items it was contracting to take.³ We are of the opinion that since the use of characters and character names are nowhere specifically mentioned in the agreements, but that other items, including the title, "The Maltese Falcon", and their use are specifically mentioned as being granted, that the character rights with the names cannot be held to be within the grants, and that under the doctrine of ejusdem generis, general language cannot be held to include them.⁴ As was said in Phillip v. Jerome H. Remick & Co., S.D., N.Y., Op. No. 9,999, 1936, "Such doubt as there is should be resolved in favor of the composer. The clearest language is necessary to divest the author of the fruits of his labor. Such language is lacking here." See, also, Tobani v. Carl Fischer, Inc., 1942, 263 App.Div. 503, 507, 33 N.Y.S.2d 294, 299, affirmed 1942, 289 N.Y. 727, 46 N.E.2d 347.

The conclusion that these rights are not within the granting instruments is strongly buttressed by the fact that historically and presently detective fiction writers have and do carry the leading characters with their names and individualisms from one story into succeeding stories. This was the practice of Edgar Allen Poe, Sir Arthur Conan Doyle, and others; and in the last two decades of S. S. Van Dine, Earle Stanley Gardner, and others. The reader's interest thereby snowballs as new "capers" of the familiar characters are related in succeeding tales. If the intention of the contracting parties had been to avoid this practice which was a very valuable one to the author, it is hardly reasonable that it would be left to a general clause following specific grants. Another buttressing fact is that Hammett wrote and caused to be published in 1932, long after the Falcon agreements, three stories in which some of the leading characters of the Falcon were featured, and no objection was voiced by Warner. It is also of some note that the evidence shows that Columbia, long subsequent to the conveying instruments, dickered with Warner for the use of the Falcon on its "Suspense" radio program and, failing in its efforts, substituted "The Kandy Tooth" which uses the Falcon characters under license of Hammett. Warner made no claim against Columbia at or reasonably soon afterward. The conclusion we have come to, as to the intention of the parties, would seem to be in harmony with the fact that the purchase price paid by Warner was $8,500.00, which would seem inadequate compensation for the complete surrender of the characters made famous by the popular reception of the book, The Maltese Falcon; and that the intention of the parties, inclusive of the "Assignment", was not that Hammett should be deprived of using the Falcon characters in subsequently written stories, and that the contract, properly construed, does not deprive Hammett of their use.

Up to this point we have discussed the points at issue by construing the contract and by seeking the intention of the parties to it, and we have concluded that the parties never intended by their contract to buy and sell the future use of the personalities in the writing.

It will now be profitable to consider whether it was ever intended by the copyright statute that characters with their names should be under its protection.

The practice of writers to compose sequels to stories is old, and the copyright statute, though amended several times, has never...