Roy Export Co. Establishment v. Columbia Broadcasting System, Inc.

672 F.2d 1095
CourtCourt of Appeals for the Second Circuit
DecidedMarch 4, 1982
DocketNo. 13, Docket 81-7027
StatusPublished
Cited by10 cases

This text of 672 F.2d 1095 (Roy Export Co. Establishment v. Columbia Broadcasting System, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Second Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Roy Export Co. Establishment v. Columbia Broadcasting System, Inc., 672 F.2d 1095 (2d Cir. 1982).

Opinion

NEWMAN, Circuit Judge:

Although the 1976 Copyright Act, 17 U.S.C. app. §§ 101-810 (1976), prospectively ended the era of common-law copyright as of January 1, 1978,1 troublesome questions will continue to arise for some time concerning the availability of pre-1978 common-law protection for intellectual property.2 Some of those questions are among the issues presented by this appeal from a judgment of the District Court for the Southern District of New York, awarding compensatory and punitive damages to plaintiffs-appellees Roy Export Co. and others 3 for statutory and common-law copyright infringement and unfair competition by defendant-appellant Columbia Broadcasting Systems, Inc. (CBS). The underlying action arose from CBS’s 1977 network television broadcast of a film biography of Charlie Chaplin, which included a collection of film clips from six of Chaplin’s motion pictures in which the plaintiffs hold exclusive rights.4 On appeal, CBS primarily attacks the bases of those claims against it that are grounded in state law, arguing that the plaintiffs had no common-law copyright in any of the works at issue and that the plaintiffs’ tort claim for unfair competition was preempted by the federal copyright statute. CBS also argues that the damages award was excessive and duplicative and that, in any event, its conduct was protected by the First Amendment. We reject all of these contentions and affirm the judgment of the District Court.

To understand the relationship among the several works involved in this controversy, it is necessary to trace the history of the parties’ competing efforts to create a film memorial to Charlie Chaplin. In 1972, the Academy of Motion Picture Arts and Sciences (“AMPAS”) asked Bert Schneider, who along with Mo Rothman acted as the plaintiffs’ representative in all matters relevant to this-case, to supervise the making of a tribute to Chaplin, in the form of highlights from his motion pictures, to be shown in connection with a proposed appearance by Chaplin at the 1972 Academy Awards ceremony. Schneider in turn secured the services of director Peter Bogdanovich and, [1098]*1098through Bogdanovich, of film editor Richard Patterson. Schneider, Bogdanovich, and Patterson then selected and edited a series of classic scenes from Chaplin’s movies, planned the sequence and timing of the scenes, and produced the “Compilation,"5 a thirteen-minute film montage of the master’s greatest hits. The Compilation was televised nationally by NBC as part of the 1972 Academy Awards, at which Chaplin received a special award. It was understood that AMPAS’s right to use the Compilation was strictly limited to that onetime showing, and the plaintiffs have not authorized the showing of the Compilation since that date.

In 1973, CBS began work on a retrospective of Chaplin’s life, intended for use as a film obituary when Chaplin died. CBS soon learned, however, that the plaintiffs held all rights in the films involved here and that, despite repeated requests, plaintiffs would not grant CBS permission to use the films. The plaintiffs explained their refusal by informing CBS that they had begun production of their own “definitive” Chaplin biography, “The Gentleman Tramp,” and therefore would not relinquish their copyright advantage. Rebuffed, CBS prepared a “rough cut” of a Chaplin biography, consisting primarily of public domain footage. The plaintiffs meanwhile completed work on “The Gentleman Tramp,” which included some of the same film segments collected in the Compilation but did not use the Compilation itself. The plaintiffs planned to license “The Gentleman Tramp” to theaters abroad and to television networks in the United States. Twice during 1976 and 1977, in fact, the plaintiffs attempted to sell CBS such a license. CBS did not purchase the license, content for the time being with its “rough cut.”

Charlie Chaplin died on December 25, 1977. Although CBS had its “rough cut” biography ready for showing, the network elected not to use it, preferring instead to use a copy of the Compilation obtained from NBC. NBC had kept a videotape of the Compilation from its 1972 telecast of the Academy Awards and had provided CBS News with a copy of the videotape on the assurance that CBS would show only brief portions of the excerpted films and only on its regular nightly news program. The copy, however, appears to have found its way to Russell Bensley, director of the CBS Special Events Unit. Although Bensley knew of the plaintiffs’ repeated refusals to grant CBS permission to use excerpts from the copyrighted films, and although Bensley was unable to reach Schneider or Rothman to make an eleventh-hour plea for reconsideration, CBS decided to put together a new version of a Chaplin biography, incorporating, with minor editing, the Compilation obtained from NBC. The newer version, heavily dependent on what CBS knew to be copyrighted material, was broadcast on December 26, 1977, in preference to the legally less vulnerable “rough cut.”

The broadcast occasioned the plaintiffs’ damage suit. They claimed (1) that the broadcast’s use of the Chaplin film clips infringed their statutory copyrights in the films, (2) that the use of the clips in the particular form of the Compilation infringed a common-law copyright in the Compilation itself as an unpublished independent creation, and (3) that the broadcast competed unfairly with the plaintiffs’ own Chaplin retrospective, “The Gentleman Tramp,” whose marketability the plaintiffs had intended to protect with their copyrights in its constituent material. After a trial in September and October of 1979 before Judge Robert J. Ward in the Southern District of New York, the jury found CBS liable to the plaintiffs for $307,281 compensatory and $410,000 punitive damages.6 [1099]*1099CBS’s post-trial motions were denied in a comprehensive opinion by Judge Morris E. Lasker,7 who also granted the plaintiffs’ cross-motion for an additional award of statutory damages in the amount of $5,000. Roy Export Co. v. CBS, 503 F.Supp. 1137 (S.D.N.Y.1980). This appeal followed.

A. The First Amendment

CBS first asserts a generalized First Amendment privilege as a bar to the plaintiffs’ claims, arguing that a right to report newsworthy events such as Chaplin’s death shields it from liability. CBS points out that the principal reason for Chaplin’s fame is to be found in his films, and argues that it is therefore meaningless to attempt a full account of his life without making some use of the very things that make that life worth remembering. CBS claims a limited right to use the “gems” of Chaplin’s motion pictures — specifically, those film clips collected in the Compilation — in order adequately to memorialize him at his death. In addition, CBS claims a similar right to use the particular form in which it broadcast the clips, i.e., the Compilation, instead of simply showing independently excerpted film segments. In CBS’s view, the 1972 Academy Awards ceremony, at which the Compilation received its single public showing, was an “irreducible single news event” to which the showing of the Compilation was integral.

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672 F.2d 1095, Counsel Stack Legal Research, https://law.counselstack.com/opinion/roy-export-co-establishment-v-columbia-broadcasting-system-inc-ca2-1982.