Warner Bros. Pictures v. Columbia Broadcasting System

• Decision Date: 28 December 1951
• Docket Number: Civ. No. 8265.
• Court: U.S. District Court — Southern District of California
• Parties: WARNER BROS. PICTURES, Inc. et al. v. COLUMBIA BROADCASTING SYSTEM, Inc. et al.

102 F. Supp. 141

WARNER BROS. PICTURES, Inc. et al. v. COLUMBIA BROADCASTING SYSTEM, Inc. et al.

Civ. No. 8265.

United States District Court S. D. California, Central Division.

December 28, 1951.

Freston & Files, Gordon L. Files, Los Angeles, Cal., for plaintiffs.

Crider, Runkle & Tilson, Clarence B. Runkle, Los Angeles, Cal., for Columbia Broadcasting System, Inc., William Spier, The Wildroot Company, Inc., Regis Radio Corp., Batten, Barton, Durstine & Osborn, Inc., William Robert Tallman and Joe Eisinger.

Laurence W. Beilenson, William Berger, Beverly Hills, Cal., Leonard Zissu, New York City, for Dashiell Hammett.

MATHES, District Judge.

Plaintiff Warner Bros. Pictures, Inc., as owner of the motion picture, radio and television rights in the copyrighted work "Maltese Falcon," seeks by this action, see Hammett v. Warner Bros. Pictures, 2 Cir., 1949, 176 F.2d 145, an injunction and damages for alleged copyright infringement and unfair competition. 28 U.S.C. § 1338 (a, b); Hurn v. Oursler, 1938, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148; Musher Foundation v. Alba Trading Co., 2 Cir., 1942, 127 F.2d 9, certiorari denied, 1942, 317 U.S. 641, 63 S.Ct. 33, 87 L.Ed. 517. In furtherance of convenience a separate trial of the issue of liability was ordered, and the case has been tried and submitted for decision as to that issue. Fed.Rules Civ.Proc. rule 42(b), 28 U.S.C.A.

The material facts are these: "Maltese Falcon," Dashiell Hammett's fiction story of exploits of private detective Sam Spade, was copyrighted in 1929 and published in installments in five issues of Black Mask Magazine. These copyrights were assigned by Pro-Distributors Corporation, publisher of the magazine, to Alfred A. Knopf, Inc., joined as a party plaintiff. See Fed. R.Civ.P. rule 19(a), 20; Independent Wireless Telegraph Co. v. R. C. A., 1926, 269 U.S. 459, 468, 469-474, 46 S.Ct. 166, 70 L.Ed. 357; L. C. Page & Co. v. Fox Film Corp., 2 Cir., 1936, 83 F.2d 196. Defendant Hammett had previously granted plaintiff Knopf, by instrument dated March 29, 1928, "the sole and exclusive right to publish the work * * * in book form" and also the additional rights of "second serialization, selection, syndication, translation, dramatic, motion picture, radio broadcasting and all other rights excepting first serial."

Plaintiff Warner derives its rights in the copyrighted work under an instrument executed June 23, 1930 by Knopf and Hammett as "Owners" and Warner Bros. as "Purchaser."

As disclosed by this document, Warner as "Purchaser" was granted the following rights inter alia "in and to that certain story, hereinafter called `writings,' entitled `MALTESE FALCON' * * *: 1. (a) the exclusive * * * motion picture rights, including, common law and statutory copyright in the same * * * together with all benefits of the copyrights in such writings, the title and the theme thereof, and of all remedies held thereunder, with respect to such motion picture rights; (b) the exclusive right to make motion picture versions thereof * * * including the exclusive right to show * * * photographs in motion, representing scenes or action taken from or based upon said writings, or any adaptation thereof; (c) the exclusive right to record and reproduce language, speech, songs, music, dancing, choreography and other sounds in connection with * * * the production and exhibition of photoplays based upon such writings * * *; (d) the exclusive right for the purpose of such sound records and photoplays, to adapt, use, dramatize, arrange, change, transpose, make musical versions of, add to, interpolate in and subtract from said writings, the language, title and dialogue thereof * * *; (e) the exclusive right to record such writings, language and dialogue and such adaptations, dramatizations, arrangements, change * * * and interpolations on sound records and to reproduce the same from such sound records in synchronism with and/or separately from such photoplays * * *; (f) the right in the writings for production and use upon the spoken stage * * * is reserved to the Owners, but all other now or hereafter existing dramatic, exhibition or other presentation rights in the writings, and without limiting the generality of the foregoing, including talking motion picture rights * * * as well as the right to transmit and exploit scenes and pictures taken or adapted from or based upon said writings, the language, title and dialogue thereof, by radio, television or otherwise, together with the right to transmit and reproduce by radio, television or otherwise, the writings, the language, title and dialogue thereof and the sound records herein referred to in connection with the broadcasting of said motion picture versions * * * are granted exclusively to the Purchaser * * * and 12. The Owners warrant and agree that they will not cause or allow or sanction any publication or dramatization of said writings or any arrangement, or revision or reissue thereof in any form in any parts of the world, without first granting to the Purchaser, without further consideration, the silent and talking motion picture rights and the mechanical and recording and reproducing rights (and all the rights set forth in paragraph (1) hereof) and in and to any such arrangement, revision or reissue above named."

Concurrently with the execution of the above grant, co-plaintiff Knopf, by instrument executed for recordation purposes see 17 U.S.C. § 30, assigned to plaintiff Warner Bros. the "motion picture rights * * * as well as radio broadcasting and television rights" in "Maltese Falcon."

Acting under these instruments of grant and assignment, Warner Bros. made three copyrighted motion-picture versions of the story: one entitled "Maltese Falcon" released in 1931; one entitled "Satan Met a Lady" released in 1936; and one again entitled "Maltese Falcon" released in 1941.

In 1932, some two years after the foregoing transfers, defendant Hammett wrote and had published three original stories entitled "A Man Called Spade," "Too Many Have Lived" and "They Can Only Hang You Once." Sam Spade was the name of the principal character in each of these 1932 stories, which were published again in 1944 and later in a collection called "The Adventures of Sam Spade and Other Stories by Dashiell Hammett."

Years later, by instrument dated May 15, 1946 defendant Hammett granted to Rosenberg and White "the sole and exclusive right to the use in the fields of radio, television, motion pictures * * * of a fictional character originated, conceived and created by me known as Sam Spade." Defendant Regis Radio Corporation later became assignee of "certain rights" so granted, and pursuant to this transfer the radio show "The Adventures of Sam Spade," written by defendants Tallman, Doud, and Eisinger, was produced and broadcast as a weekly half-hour program almost continually from 1946 to 1950. With the exception of "The Kandy Tooth," which was first presented in two parts and later broadcast on an hour-long program called "Suspense," a single "caper" of Sam Spade was presented on a half-hour broadcast each week.

It is these radio broadcasts which plaintiff Warner claims constitute infringement of copyright and unfair competition. The primary ground upon which these claims are rested is the contention that Warner has the exclusive right to use the characters portrayed in "Maltese Falcon" — and thus to create sequels to the work — in the fields of motion pictures, radio and television by virtue of the grant to Warner as "Purchaser" under the above quoted provisions of the agreement of June 23, 1930.

The words of the instrument itself are that "Owners" Knopf and Hammett granted "Purchaser" Warner Bros. rights "in and to that certain story, hereinafter called `writings,' entitled `Maltese Falcon'" as follows: 1 "the exclusive * * * motion picture rights * * * together with all benefits of the copyrights in such writings, the title and theme thereof"; 2 "the exclusive right to record and reproduce language * * * and other sounds in connection with * * * the production and exhibition of photoplays based upon such writings"; and 3 "the exclusive right to record such writings * * * and * * * adaptations and dramatizations on sound records and to reproduce the same"; provided however that "the right in the writings for production and use upon the spoken stage * * * is reserved to the Owners, but 4 all other now or hereafter existing dramatic, exhibition or other presentation rights in the writings * * * including * * * the right to transmit and exploit scenes and pictures taken or adopted from or based upon said writings * * * by radio, television or otherwise * * * are exclusively granted to the Purchaser * * *."

Thus, insofar as material here, the instrument itself — the source from which the quantum of rights conveyed to Warner Bros. must be ascertained — is completely silent as to whether or not the author retained any right to use the characters of "Maltese Falcon" in other works.

It has long been common practice among detective-fiction writers to make use of the same central and supporting characters in subsequent works. This pattern was set by the first of modern detective-fiction writers, Edgar Allen Poe, who depicted the exploits of amateur detective Monsieur C. Auguste Dupin in a series of works: "The Murders of Rue Morgue," "The Mystery of Marie Roget," and "The Purloined Letters." See Haycraft, Murder for Pleasure: The Life and Times of the Detective Story (1941) 11, 27.

Poe's start of a "series detective" was given permanence by Sir Arthur Conan Doyle in his creation of Sherlock Holmes. See Boucher, Four and Twenty Bloodhounds, foreword p. v (1950). By the time "Maltese Falcon" was first published, the series detective had become a common and recognized device in detective fiction. See MacGowan, Sleuths, foreword p. x (1931). A present-day example is Erle Stanley Gardner's repeated use of the fictional character Perry Mason.

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