Trust Co. Bank v. MGM/UA Entertainment Co.

772 F.2d 740
CourtCourt of Appeals for the Eleventh Circuit
DecidedSeptember 27, 1985
DocketNo. 84-8605
StatusPublished
Cited by8 cases

This text of 772 F.2d 740 (Trust Co. Bank v. MGM/UA Entertainment Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Eleventh Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Trust Co. Bank v. MGM/UA Entertainment Co., 772 F.2d 740 (11th Cir. 1985).

Opinion

JAMES C. HILL, Circuit Judge:

Appellant/defendant MGM/UA Entertainment Company (“MGM”) appeals a district court order, 593 F.Supp. 580, holding that appellees/plaintiffs, not MGM, possess the “sequel rights” to Gone with the Wind. We affirm.

I. FACTS

In 1936, Margaret Mitchell, author of the classic novel Gone with the Wind, entered into a written agreement with Selznick International Pictures, Inc. (“SIP”), MGM’s predecessor-in-interest. Under this 1936 agreement, Ms. Mitchell granted the mo[741]*741tion picture rights to the novel to SIP. The agreement was silent as to whether Ms. Mitchell also granted SIP “sequel rights,” which, in the motion picture industry, are defined as the right to use characters portrayed in original stories in new and different stories. E.g., Goodis v. United Artists Television, Inc., 425 F.2d 397, 406 (2d Cir.1970); Landon v. Twentieth Century-Fox Film Corp., 384 F.Supp. 450 (S.D.N.Y.1974). The parties apparently did not discuss the matter of sequel rights during their negotiations.

While there was no talk of sequel rights before the 1936 agreement was executed, there was much talk of them afterward. Beginning in February 1938, which was even before the movie was into production, David 0. Selznick, president of SIP, made efforts to acquire sequel rights to Gone with the Wind from Margaret Mitchell. At that time, he sent a memorandum to Katharine Brown, SIP’s east coast representative, stating in relevant part:

I wonder if you couldn’t start the wheels going toward a GONE WITH THE WIND sequel with an agreement on our part to pay a substantial price.
Inevitably a sequel to this story will be very valuable, both from publication and picture standpoints, and while I feel it practically certain that if and when Miss Mitchell should write such a sequel she would offer it to us, I feel that perhaps we could stir her into writing one partially through making it clear how much money she could make out of such a sequel through what we would agree to pay, and what book publishers, magazines and newspaper syndicates would agree to pay, which I think might cause her to get busy on such a sequel.

If all else failed, and as a considerably less desirable alternative, perhaps she would sell us the future exclusive radio, television and picture rights to the characters of Rhett and Scarlett, which would permit us to do our own sequel, or sequels, just as M.G.M. has done and are \sic ] doing with THE THIN MAN series. Plaintiff’s Exhibits at Tab 8, Document No. 4002. Ms. Brown responded that she would attempt to get the sequel rights from Ms. Mitchell, but advised that she would prefer to postpone any such conference until after production of Gone With the Wind began.

Production got started shortly thereafter, and the motion picture, starring Clark Gable, Vivian Leigh, Leslie Howard and Olivia DeHaviland, premiered in Atlanta on December 15, 1939. It was an immediate artistic, critical and commercial success, and continues today to be one of the most successful pictures ever made. Once the picture came out, the public clamored to know whether Rhett and Scarlett, the two protagonists of the movie, ever reunited.

Apparently encouraged by this public clamor, Mr. Selznick continued his efforts to acquire sequel rights. In January 1940, he sent a memorandum to Ms. Brown and Mr. J.H. Whitney, a major stockholder and officer of SIP, stating in relevant part:

I assure you we can make more money than we can out of making two or three ‘REBECCA’s’ simply by selling the sequel rights together with Miss Leigh, if we are foolish enough not to make the pictures ourselves.
I think we ought to get busy on this, and without any more nonsense about what an awful thing it would be to do. TO WHOM, IS WHAT I WANT TO KNOW? The public wants it, the exhibitors want it, MGM wants it, and I want it, and what are you three (the two of you and Miss Mitchell) against so many? I think we should try to buy all sequel rights from her so that we can go on making sequels forever, in the manner of ‘The Thin Man,’ if that should prove, as I suspect it would, to be a more profitable endeavor than making all the other pictures we can think of combined.

Id. at Tab 13, Document No. 4014. In February, he again wrote to Ms. Brown:

There is only one thing I want to get out of the Marshes [i.e., Ms. Mitchell and her husband, John Marsh], and that is to [742]*742buy sequel rights from them____ Whether or not we ourselves ever make the dequel [sic], there is a fortune to be made on a deal under which Metro would make the picture, if we didn’t want to make it ourselves. And there is literally nothing in our projected future comparably important from a financial standpoint with the securing of these sequel rights.

Id. at Tab 14, Document No. 4015.

Ms. Mitchell was opposed to any effort to carry on the story of Rhett and Scarlett beyond the end of the novel, primarily because she believed any resolution of what happened to Scarlett and Rhett would undermine the integrity of the original story. In 1940, her husband, John Marsh, wrote a letter to Daniel O’Shea, assistant to the president of SIP, stating:

You may be certain that we will take steps to prevent any sale or use of this purported sequel, for Mrs. Marsh does not intend to have her sequel rights infringed upon in any way. Of course, the rights are worth a lot of money to her, but, beyond that, she feels a personal interest in Scarlett, Rhett, and the other characters she created and she would fight to defend them from misuse and abuse by some other writer.

Id. at Tab 15, Document No. 4035.

On June 6, 1940, Ms. Brown wrote Ms. Mitchell, informing her that Mr. Selznick “would like to purchase from you the sequel rights____” She continued,

He ... asked me to ask you two questions: 1., if you would write a sequel to ‘GONE WITH THE WIND’ in book form, or in narrative motion picture form (the latter would mean an outline with as much or as little dialogue as your prefer); 2., if you yourself would not care to write a sequel, would you sell to us the right to create a sequel ourselves.

Id. at Tab 16, Document No. 4042. In a letter dated June 14, 1940, Ms. Mitchell responded,

About the sequel rights, your inquiry was not unexpected, as there have been so many stories in the newspapers about proposed or possible sequels to the movie. I appreciate the frankness with which you discuss the situation and I will answer in the same manner, as follows: 1. I have no plans at this time for writing a sequel to ‘Gone With the Wind’; 2. I would not consider selling the right to create a sequel, to Mr. Selznick or anybody else.

Id. at Tab 17, Document No. 4043.

Ms. Mitchell’s letter did not end the matter. Mr. Selznick continued to write Ms. Brown about sequel rights and Ms. Brown and others continued to communicate with Ms. Mitchell about them throughout the 1940s. Ms. Mitchell continued to refuse and was adamant right up to her death in 1949 that no sequel ever be made.

When Margaret Mitchell died in 1949, all her rights in

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Trust Company Bank v. Mgm/Ua Entertainment Company
772 F.2d 740 (Eleventh Circuit, 1985)

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Bluebook (online)
772 F.2d 740, Counsel Stack Legal Research, https://law.counselstack.com/opinion/trust-co-bank-v-mgmua-entertainment-co-ca11-1985.