Williams v. Weisser

• Decision Date: 05 June 1969
• Citation: 273 Cal.App.2d 726,78 Cal.Rptr. 542
• Court: California Court of Appeals Court of Appeals
• Parties: , 38 A.L.R.3d 761, 163 U.S.P.Q. 42 B. J. WILLIAMS, Plaintiff and Respondent, v. J. Edwin WEISSER, dba Class Notes, Defendant and Appellant. Civ. 32615.

Page 542

78 Cal.Rptr. 542

273 Cal.App.2d 726, 38 A.L.R.3d 761, 163 U.S.P.Q. 42

B. J. WILLIAMS, Plaintiff and Respondent, v. J. Edwin WEISSER, dba Class Notes, Defendant and Appellant.

Civ. 32615.

Court of Appeal, Second District, Division 5, California.

June 5, 1969.

As Modified June 11, 1969.

Rehearing Denied July 1, 1969.

Hearing Denied July 30, 1969.

Robert Louis Finkel, Van Nuys, for defendant and appellant.

Amil Roth, Beverly Hills, for plaintiff and respondent.

Thomas J. Cunningham and James E. Holst, Berkeley, amici curiae for plaintiff and respondent.

KAUS, Presiding Justice.

Defendant Weisser, who does business under the fictitious name of Class Notes, appeals from a judgment which enjoins him from copying, publishing and selling notes of lectures delivered by plaintiff in his capacity as an Assistant Professor of Anthropology at the University of California at Los Angeles ('UCLA'). The judgment also awards plaintiff $1,000.00 in compensatory and $500.00 in exemplary damages.

A joint pretrial restatement described the nature of the case as follows: 'Plaintiff is Assistant Professor at UCLA in the Anthropology Department. Defendant does business in Westwood, California as Class Notes selling outlines for various courses given at UCLA. In 1965, defendant paid Karen Allen, a UCLA student, to attend plaintiff's class in Anthropology 1 to take notes from the lectures, and to type up the notes. Allen delivered the typed notes to defendant and defendant placed a copyright notice thereon in defendant's name, reproduced the typed notes, and sold and offered them for sale. Plaintiff objected. Defendant did not cease these activities until served with summons, complaint and temporary restraining order. Plaintiff seeks a permanent injunction, general damages, and punitive damages.'

At the pretrial it was agreed that: 'Defendant has used plaintiff's name in selling the publications here in question.'

The judgment in plaintiff's favor was based on two grounds: 1. defendant infringed plaintiff's common law copyright in his lectures; and 2. defendant invaded plaintiff's privacy by the use of plaintiff's name. (Fairfield v. American Photocopy, etc., Co., 138 Cal.App.2d 82, 291 P.2d 194.)

On appeal defendant advances the following points:

1. The common law copyright in plaintiff's lectures presumptively belonged to UCLA. Defendant's efforts at the trial to show that a purported assignment of the rights of the university to plaintiff was not intended to be an assignment or, if it was, that it was made under a mistake of law, were erroneously cut off by a peremptory ruling that plaintiff was the owner of the copyright.

2. Even if plaintiff was the owner of the copyright the 'general and unrestricted publication' of the 'organization and content' of the lectures constituted a divestment of any such right.

3. Defendant's use of the notes was 'a fair use and did not constitute a wrongful trading on, or actionable commercial abuse of, plaintiff's personality or reputation.'

4. The evidence does not support the award of damages, compensatory or exemplary.

Certain preliminary observations are in order:

1. The product of the mind in which the plaintiff claims a copyright consists of the extensive notes which he had compiled before the beginning of the course, together with the oral expression at the time of delivery of the lectures, based on the notes, which delivery included charts and diagrams placed on the classroom blackboard. This is, therefore, not a case where the concrete expression of the 'composition' (Civ.Code § 980(a)) consists solely of an intangible oral presentation. (Nimmer on Copyright § 11.1.) As far as this litigation is concerned, the chief importance of the oral presentation is that it provided defendant with access to plaintiff's work and with an argument that there had been a divestive publication.

2. Defendant does not dispute on this appeal that the lectures were properly the subject of a common law copyright. Below it was contended that they lacked originality, were 'merely lightly embellished and thinly disguised paraphrasings of the works of others, both as to form and content' and were 'wholly in the public domain.' These contentions are now abandoned.

3. Substantial similarity between the lectures and the notes published by defendant is conceded.

Ownership Of Copyright

Plaintiff became employed by UCLA starting in July 1965. Defendant's relations with the university started in 1948 when he began to publish and sell to students what purported to be notes of various courses. In 1963 defendant and the university authorities agreed on certain ground rules as a condition to advertising in the Daily Bruin, the student newspaper. Friction arose between defendant and the administration. The matter culminated in a memorandum dated November 19, 1964, addressed to all members of the faculty. It is copied in the footnote. ¹

At the trial Vice Chancellor Sherwood of UCLA appeared as one of plaintiff's witnesses. He testified, among other matters, to the following: He had served for eight years as a member of the faculty committee charged with the responsibility of approving manuscripts for publication by the University of California Press. If a professor's manuscript was thought to have commercial value, the university would sign a regular publisher's contract with the author, under which contract the professor would receive royalties at commercial rates. This was, to his knowledge, the practice throughout the United States. ²

In 1964 Vice Chancellor Sherwood and Vice Chancellor Young drafted the memorandum of November 19, 1964. This was done after a discussion with Mr. John Sparrow, counsel representing the university. The court's peremptory ruling to the effect that plaintiff, rather than the university, was the owner of the copyright came right after Sherwood, on cross-examination, had perhaps admitted that if it were the law of California that the copyright in a professor's lectures belongs to the university that might have somehow affected the November 19, 1964, memorandum. ³ He did, however, point out that if such were the law, it would simplify his job immensely, since 'a faculty member would not be able to leave the university for the university would have a right to his lectures and he could only go to another institution if he were in a position to turn his attention to a new subject.' ⁴

During the argument that followed the ruling, counsel, although he perhaps was not required to do so (Tossman v. Newman, 37 Cal.2d 522, 525--526, 233 P.2d 1; Lawless v. Calaway, 24 Cal.2d 81, 90--91, 147 P.2d 604; Caminetti v. Pacific Mut. Life Ins. Co., 23 Cal.2d 94, 100, 142 P.2d 741; People v. Jones, 160 Cal. 358, 363, 117 P. 176; Evid.Code § 354(c)), stated: '* * * I believe he would testify, and I offer by way of offer of proof, that this witness will further testify if allowed to do so that this letter was nothing more than a statement of his and Chancellor Young's understanding of California common-law.'

After this offer of proof the court asked a few questions of the witness: '* * * I will just ask one more question on this subject, Dr. Sherwood. Whether it was rightly or wrongly the expression of the opinion of counsel, is this the policy that was followed by the university with respect to these lecture notes? THE WITNESS: It is. THE COURT: And that is what you intended? THE WITNESS: And that is what we intended.'

If it were the law that, in the absence of evidence one way or another, UCLA rather than plaintiff is presumed to be the owner of the copyright to plaintiff's lectures or if the record contained any evidence that plaintiff had assigned his copyright to the university, the trial court's ruling would have been premature. For what it was worth, defendant was still developing his theory that the November 19 memorandum did not effectively transfer the university's copyright to plaintiff.

We are, however convinced that in the absence of evidence the teacher, rather than the university, owns the common law copyright to his lectures. Since there was no evidence that plaintiff had assigned his copyright to the university, the entire question of whether the university had quitclaimed something it did not own was beside the point. Defendant was therefore not prejudiced by the ruling. ⁵

Defendant claims that the opposite is the law. His sole statutory authority is section 2860 of the Labor Code which reads as follows: 'Everything which an employee acquires by virtue of his employment, except the compensation which is due to him from his employer, belongs to the employer, whether acquired lawfully or unlawfully, or during or after the expiration of the term of his employment.'

It is obvious that a literal application of that section does not cover the present situation. The code speaks of things which the employee 'acquires,' not matters which he creates. In Burns v. Clark, 133 Cal. 634, 639, 66 P. 12, 14, the Supreme Court said that the section, then section 1985 of the Civil Code, was to be construed as 'but an expression of the familiar principle that forbids an agent or trustee from using the trust property or powers conferred upon him for his own benefit, and which, in case of his doing so, requires him to account for the profits. * * *.' (See also Southern Cal. Disinfecting Co. v. Lomkin, 183 Cal.App.2d 431, 444, 7 Cal.Rptr. 43.) Thus the section has been applied principally, though not exclusively, to unfair competition carried on by former employees with the use of trade secrets and the like. Even so it has been narrowly employed. (Aetna Bldg. Maintenance Co. v. West, 39 Cal.2d 198, 204, 246 P.2d 11.) We do not believe it applies here.

Defendant also claims that plaintiff is in the position of an employee for hire whose employment calls for the creation of a copyrightable work, or, perhaps, of an independent contractor who has been so commissioned. (Nimmer on...