Opinion
Page __
__ Cal.App.2d __ 212 P.2d 574 JACKSON v. UNIVERSAL INTERNATIONAL PICTURES, Inc. et al. Civ. 16855. California Court of Appeals, Second District, Third Division Dec. 15, 1949.Subsequent opinion 222 P.2d 433.
Rehearing Denied Jan. 9, 1950.
[212 P.2d 576] Loeb & Loeb, Adrian A. Kragen and Harry B. Swerdlow, Los Angeles, for appellants.
Harold A. Fendler, Beverly Hills, for respondent.
VALLEE, Justice.
Appeal from a judgment for plaintiff entered on a verdict of a jury in an action for damages for the alleged appropriation of the title of a stage play--'Slightly Scandalous'--as the title of a motion picture.
Frederick Jackson, respondent, a writer with about 40 years experience, in 1943 wrote a stage play finally titled 'Slightly Scandalous.' In the spring of 1944 the play was privately rehearsed. On April 26, 1944, while it was in rehearsal, a publicity man was employed to exploit it, his employment to begin May 8, 1944. On May 4, 1944, a one-inch item in a single column appeared in The Hollywood Reporter, a trade journal, saying that the play, naming the star as Janet Beecher, would open in Philadelphia on May 29 and in New York on June 14, 1944. On May 9, a small item appeared in the Los Angeles Evening Herald-Express to the effect that the author was putting final directorial touches on 'Slightly Scandalous' before it left for a Philadelphia pre-New York opening May 28, and that Janet Beecher was the star. On May 10, 1944, Variety, a theatrical publication read generally by people in the theater and motion picture industries, published in New York and on sale at newsstands in the principal cities of the country, carried 'Slightly Scandalous' as among 'Shows in Rehearsal.' On May 11, 1944, the Los Angeles Times, in a New York-dated story principally about another play, said that the title of the play in which Janet Beecher was to be starred had been changed to 'Slightly Scandalous', that it would immediately go into rehearsal in Hollywood, and be due in New York in June.
Prior to and during its Philadelphia and New York run, the play was advertised in newspapers and on billboards and 'heralds' were printed for distribution in hotels and restaurants. The advertising campaign conducted in Philadelphia consisted principally of the following: From May 21 to June 3 (exclusive of Sundays), five Philadelphia [212 P.2d 577] newspapers published advertisements consisting of 10 to 14 lines each, and one newspaper published 25 lines on two days. One of the five newspapers on two weekdays during that period published a 60-line advertisement. From June 5 to June 10 the same five newspapers published a daily advertisement consisting of 8 to 13 lines, with the exception of one which on one weekday published a 60-line advertisement. On three successive Sundays--May 21, May 28, and June 4--three Philadelphia newspapers published an advertisement consisting of 40 to 60 lines. In addition to the foregoing, 20,000 'heralds' were printed for placement in hotels and restaurants, 50 '24-sheets' of outdoor advertising were posted on billboards, single- and double-column pictures of the star of the production were prepared and presented to the newspapers, as well as other miscellaneous forms of advertisements.
The advertising in New York was mainly as follows: on June 8, 9, 10 and 12, four of the principal New York newspapers published a 12 to 13-line advertisement. On Sunday, June 11, five New York newspapers, including the four noted above, published a 50-line advertisement, and one newspaper--The Brooklyn Eagle--published a 12-line advertisement. On June 13, 14, 15, 16 and 17, ten New York newspapers (including the four noted above) published a 6 to 13-line advertisement. There is also evidence that bills were paid for typing a number of publicity stories, but no evidence that any of them was published. As near as we can estimate from the record, the total expenditure for advertising and publicity was $3,343.20.
The play opened in Philadelphia on May 29, 1944. After the opening it was 'panned' in all Philadelphia newspapers. There were 15 performances in less than two weeks. The attendance did not exceed 3,000 persons, an average of 200 persons each performance. The capacity of the theater was in excess of 1,500 persons.
The play opened in New York on June 13, 1944, and closed June 17, 1944. During its New York run the play was 'panned' by the newspapers. There were 7 performances, 5 nights and 2 matinees. The attendance did not exceed 750 persons, an average of about 100 persons each performance. The capacity of the theater was in excess of 1,000 persons. The play was a 'flop.'
The play was not presented anywhere after June 17, 1944, and there was no mention of it in any public press in this country from June 17, 1944, to the time of trial. On August 2, 1946, appellants released and distributed throughout the country a motion picture titled 'Slightly Scandalous.' Respondent's play was a farce. Appellants' picture was a musical comedy. There was no similarity whatever between the picture and the play except the title.
The complaint alleged that at all times since the first public production and presentation of the play on May 29, 1944, the title 'Slightly Scandalous' acquired widespread recognition, notoriety, and identification in the minds of the general public as the title of plaintiff's play; that the public generally throughout the United States had at all times since May 29, 1944, identified the title 'Slightly Scandalous' with plaintiff's play; and that the title acquired, and since May 29, 1944 had continued to retain, a secondary meaning in the minds of the general public throughout the United States solely identifying plaintiff's play with said title. The verdict was for the plaintiff for $17,500.
Appellants, as grounds for reversal, contend (1) the evidence was insufficient to justify a verdict that the title 'Slightly Scandalous' had acquired and retained a secondary meaning in relation to respondent's stage play; (2) the court erred in instructions given and refused; (3) the instructions were confusing and contradictory; (4) the damages awarded were excessive; and (5) counsel for respondent was guilty of prejudicial misconduct resulting in a miscarriage of justice.
The principal question to be decided is whether the evidence was sufficient to justify the implied finding of the jury that the title of the play--'Slightly Scandalous'--had acquired and retained a secondary meaning in relation to the stage play. This is not a case of a charge that appellants [212 P.2d 578] passed off the picture as respondent's play. The respondent merely claims that appellants appropriated the title.
An author of a play has no right in the mere title given to his production. Paramore v. Mack Sennett, Inc., D.C., 9 F.2d 66, 67; Martenet v. United Artists Corporation, D.C., 56 F.Supp. 639, 640. To warrant an award of damages for the alleged appropriation of the title of a play there must be (1) priority of adoption; (2) the title must have been so used as to have acquired a secondary meaning which identifies it in the public mind with the play; and (3) there must be retention of the secondary meaning to the time of the alleged appropriation. Warner Bros. Pictures v. Majestic Pictures Corp., 2 Cir., 70 F.2d 310, 311; Amusement Securities Corp. v. Academy Pictures D. Corp., 162 Misc. 608; 294 N.Y.S. 279; Selig Polyscope Co. v. Unicorn Film S. Corp., Sup., 163 N.Y.S. 62; Becker v. Loew's, Inc., 7 Cir., 133 F.2d 889, 893; Golenpaul v. Rosett, 174 Misc. 114, 18 N.Y.S.2d 889, 892, 893. The acquisition of a secondary meaning creates a right akin to a property right. Without such acquisition there is no right.
Acquiring a secondary meaning signifies that the title attained popularity. Johnston v. 20th Century-Fox Film Corp., 82 Cal.App.2d 796, 810, 187 P.2d 474. The burden was upon respondent to establish the allegations of his complaint that the title 'Slightly Scandalous' acquired a secondary meaning--acquired widespread recognition and notoriety--that the title became popular, and was so identified in the minds of the general public throughout the United States as to mean only respondent's play. The essence of appellants' wrong, if one was committed, was in the distribution of a motion picture which, from its title, the public generally would mistakenly conclude was made from respondent's play. See Armstrong Paint & V. Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195, 207. If respondent failed to establish a secondary meaning or if he failed to establish that a secondary meaning once acquired was retained, such lack of proof is fatal to his action. American Fork & Hoe Co. v. Stampit Corporation, 6 Cir., 125 F.2d 472, 475; De Long Hook & Eye Co. v. Hump Hairpin Mfg. Co., 297 Ill. 359, 130 N.E. 765, 768, 769.
In determining whether a title of a play has acquired a secondary meaning three elements are primarily to be considered: (1) The length of use of the title, (2) the nature and extent of popularizing and advertising such title, and (3) the efforts in promoting a conscious connection in the minds of the public of the title with the play. See, annotation 150 A.L.R. 1082, and cases there cited. One's right to the exclusive use of a title grows out of its use and not its mere adoption. Rest. Torts, secs. 715, 716. Generally a reasonable duration of use is a factor tending to establish--and, conversely, want of a reasonable period of time within which a title has been used is a factor tending to disprove--the existence of a secondary meaning. Annotations: 150 A.L.R. 1088, and cases there cited; 40 A.L.R. 433.
A secondary meaning is not shown merely by evidence that a title has been widely advertised for a period of time. This is true because the criterion is the achievement of a result and not the effort expended in the result. DuPont Cellophane Co. v. Waxed Products Co., 2 Cir., 85 F.2d 75, certiorari denied 299 U.S. 609, 57 S.Ct. 194, 81 L.Ed. 443; Upjohn Co. v. Wm. S. Merrell Chemical Co., 6 Cir., 269 F. 209, 214, certiorari denied 257 U.S. 638, 42 S.Ct. 50, 66 L.Ed. 410.
Generally the question whether a title has acquired or retained a secondary meaning is one of fact, Johnston v. 20th Century-Fox Film Corp., 82 Cal.App.2d 796, 813, 187 P.2d 474, but it becomes one of law when from the facts only a single inference and one conclusion may be drawn. San Diego Trust & Savings Bank v. San Diego, 16 Cal.2d 142, 153, 105 P.2d 94, 133 A.L.R. 416; Perguica v. Ind. Acc. Comm., 29 Cal.2d 857, 859, 179 P.2d 812. Where there is no conflict in the evidence on an issue, the implied finding on that issue amounts to a conclusion of law and the finding is not binding on a reviewing court. San Diego Trust & Savings Bank v. San Diego, 16 Cal.2d 142, 153, 105 P.2d 94, [212 P.2d 579] 133 A.L.R. 416; Free v. Sluss, 87 Cal.App.2d Supp. 933, 936, 197 P.2d 854. There are no conflicting inferences which reasonably can be drawn from the evidence in the present case with respect to the issues of acquisition and retention of a secondary meaning, and there is no substantial evidence which lends any support to the implied findings with respect thereto.
The ultimate test of a secondary meaning here is whether the title had become broadly known to the public as denoting respondent's play. There is no evidence whatever that the title became popular or acquired notoriety as denoting respondent's play. The only reasonable inference deducible from the evidence is that the play was extremely unpopular. There is no evidence that the advertising done--whether it was extensive as claimed by respondent or a minimum as claimed by appellants--had the effect of popularizing either the play or the title. Whether the effort expended in advertising was great or small, no results were achieved. The only reasonable inference that may be drawn from the evidence is that the advertising was of no value. No results followed. The play was not well received by the public. It was 'a flop, a dud.'
The fact that in rare instances plays which are unsuccessful on Broadway later are made into successful motion pictures with the same or a different title does not tend to prove that the title of respondent's play acquired a secondary meaning. This is particularly true in the present case where the major motion picture producers at the instance of respondent covered the play in Philadelphia or New York and in each instance reported critically thereon and where the play, together with the title, was rejected by every motion picture producer to whom it was offered.
The fact, if it be a fact, that the title 'Slightly Scandalous' in and of itself has an inherent appeal to certain classes of the public, as suggested by respondent, is of no consequence. The creator of a title of a play has no right in the title disassociated from the play. The title must have become popular as denoting the play in the minds of the public.
Respondent, for the purpose of establishing that the title retained a secondary meaning, produced five witnesses--four of them experts in the field of drama, none of the four a representative member of the public. Three of the experts in the field of drama testified that they had seen reviews or advertisements of the play in June, 1944, and that after the release of the picture they had seen some advertising about it and thought that the picture was based on the play. The fourth had attended rehearsals traveled with the cast to, and attended two performances in, Philadelphia and two in New York. A few years later, when told that there was a motion picture out with the title 'Slightly Scandalous', she thought it was 'the same play that Mr. Jackson wrote.' The fifth witness was one who may be classified as a member of the public. He reads the theater page of the New York Times every day. He saw an unfavorable review of the play in the Times in June, 1944. In 1946 or 1947 he saw an advertisement of the picture. He thought there was some connection between the motion picture and the play. He wondered why the title was used in the motion picture after the bad notices it received as a play.
The reaction of the public rather than that of experts in the field of drama is the decisive factor in determining whether a title has acquired and retained a secondary meaning. Steem-Electric Corp. v. Herzfield-Phillipson Co., 7 Cir., 118 F.2d 122, 124-125; Selchow & Righter Co. v. Western Print. & Lith. Co., D.C., 47 F.Supp. 322, 326; Skinner Mfg. Co. v. General Food Sales Co., D.C., 52 F.Supp. 432, 447, 448. The testimony of one witness, who may be classified as a member of the public, is insufficient to establish that the title retained popularity, widespread recognition, notoriety, and identification in the minds of the public as denoting respondent's play. See, McGraw-Hill Pub. Co. v. American Aviation Associates, 73 App.D.C. 131, 117 F.2d 293, 295; Orth v. Paramount Pictures, 311 Mass. 580, 587, 42 N.E.2d 524, 527. There is no evidence of a single instance of any one attending the picture in the mistaken [212 P.2d 580] belief that it was respondent's play. When a play, to which a title is attached, is dormant for such a length of time and under such circumstances that the title no longer signifies that play in the minds of the public, the right to the title is lost. Golenpaul v. Rosett, 18 N.Y.S.2d 889, 893, 174 Misc. 114, and cases there cited.
It has been held, upon much more extensive and stronger evidence than appears in the present case, that a title had not acquired a secondary meaning. Ott v. Keith Massachusetts Corporation, 309 Mass. 189, 34 N.E.2d 683; Manners v. Triangle Film Corp., 2 Cir., 247 F. 301, 303; Becker v. Loew's, Inc., 7 Cir., 133 F.2d 889, 893; Whitman v. Metro-Goldwyn-Mayer Corporation, 289 N.Y.S. 961, 159 Misc. 850; Golenpaul v. Rosett, 18 N.Y.S.2d 889, 892, 174 Misc. 114; Collins v. Metro-Goldwyn Pictures Corporation, D.C., 25 F.Supp. 781; Bowers v. Kugel, VIII The Trade Mark Reporter 400.
In Ott v. Keith Massachusetts Corporation, supra, 309 Mass. 189, 34 N.E.2d 683, 684, the plaintiff wrote a play which in 1919 he titled 'That's Right. You're Wrong.' It was played in the season of 1919-1920 in some towns in New England and New York. The court said, 'The plaintiff, the play in question, and its title, have long been forgotten by the public, and are remembered only by a few veterans of the theatre.' In 1939, the defendant produced and exhibited a motion picture titled 'That's right, you're wrong', featuring Kay Kyser. In that case, as in the case at bar, there was no similarity between the picture and the play except the title. The court held, 34 N.E.2d at pages 684-685: 'The title 'is a term of description, which serves to identify the work; but any other person can with impunity adopt it, and apply it to any other book, or to any trade commodity, provided he does not use it as a false token, to induce the public to believe that the thing to which it is applied is the identical thing which it originally designated.' Black v. Ehrich, C.C., 44 F. 793, 794. In the present case only a small part of the American public ever saw the plaintiff's play when it was performed two decades ago. In 1939 the play had long been buried in oblivion. The name called up no memory of the plaintiff or his play, but was meaningless to the public except as Kyser had given it a new meaning. Upon elementary principles of the law of unfair competition the plaintiff shows no case for relief. Jackman v. Calvert-Distillers Corp. of Massachusetts, 306 Mass. 423, 28 N.E.2d 430.'
In Manners v. Triangle Film Corp., supra, 2 Cir., 247 F. 301, a play titled 'Happiness' was presented in New York seven times in 1914, with Laurette Taylor, one of the best known actresses of her day, playing the lead. In 1915 the author advertised extensively in the newspapers that he intended to present a play under that title with Laurette Taylor. The play was not presented the second time. In early 1917 the defendant titled a picture in production 'Happiness', released and distributed it on May 29, 1917. On June 18, 1917, an injunction pendente lite was granted. In reversing the order granting the injunction the court, inter alia, said, 247 F. at page 303: 'Our view is, not that the affidavits show that the complainant had abandoned his rights in the title 'Happiness,' but that they do not show that he had ever obtained a prior right to or any monopoly in the word because of seven matinee performances of a one-act sketch in New York City in 1914. The word 'Happiness,' being public property, must, in order to acquire a secondary significance, have been used generally in connection with a play, and so have become known to the public said to be likely to be misled, viz., the public throughout the United States.'
In Becker v. Loew's Inc., supra, 7 Cir., 133 F.2d 889, about 700 copies of a book, titled 'We Who Are Young', were distributed by gift or sale. The book was reviewed in some newspapers shortly after its publication in 1936. In 1940 the defendant released a motion picture, titled 'We Who Are Young'. In reversing a judgment for the plaintiff, the court stated, 133 F.2d at page 893: 'Plaintiff rests his claim of unfair competition largely on the appropriation of his book's title. To be protected, however, a title must have attained [212 P.2d 581] a secondary significance, so that mention of the title would lead another person to think of the book. The name of plaintiff's book had not acquired and retained this secondary meaning at the time the defendant's picture was released. A span of nearly four years intervened between the publication of the book in 1936 and the first showing of defendant's photoplay in 1940; during this time many people who had seen plaintiff's book on exhibition in a bookstore window or had read a review of it in a newspaper would have forgotten it. Since the overwhelming majority of the total number of copies of plaintiff's book which were distributed were disposed of in 1936, only a few being sold in 1937, after which time sales virtually ceased, it is not unlikely that many persons who had acquired the book had no such fresh recollection of it as to connect it with a movie title which appeared four years later. Moreover, the book had only a very limited distributions, probably fewer than 700 copies in all. Even in instances where a book was currently being sold and had sales of 10,000 copies plus favorable reviews in metropolitan newspapers having a circulation running into millions, an injunction restraining the use of an identical title for a motion picture has been denied. Collins v. Metro-Goldwyn, etc., Corp., D.C., 25 F.Supp. 781.'
In Whitman v. Metro-Goldwyn-Mayer Corporation, supra, 159 Misc. 850, 289 N.Y.S. 961, the plaintiffs in April, 1933, produced a picture titled 'Inflation.' It was exhibited in several theatres in June and July, 1933. It did not attain popularity. At the instance of the plaintiffs, representatives of the defendants viewed the picture and rejected it as unsatisfactory for the defendants' use. In June, 1933, the defendants produced and exhibited a motion picture titled 'Inflation.' The court held that since the plaintiffs' picture was hardly known the defendants had a perfect right to use its title.
In Bowers v. Kugel, supra, VIII The Trade Mark Reporter 400, the plaintiff in 1910 and 1911 wrote a play, titled 'The Unborn.' It was accepted for production by the Medical Review of Reviews, under the auspices of which a private matinee performance in a New York theater was given in November, 1915, and 8 public performances were given at another New York theater during a week in December, 1915. The author and play received some notices in the New York papers in connection with the initial production. An article about the play was published in Hearst's Magazine in March, 1916. The play was given further newspaper publicity due to the attempt of the Commissioner of Licenses of New York to prevent its production. No further presentation of the play was given either upon the legitimate stage or in motion pictures. In July, 1916, the defendants exhibited in various places throughout the United States a picture, titled 'The Unborn.' The producers of the picture knew the content of the play and its title before release of the picture. The court held that the title of the play had not acquired a secondary meaning and that the defendants could use the title with impunity.
In the cases in which it has been held that a title of literary property had acquired and retained a secondary meaning, it was because there was evidence of great or widespread popularity of the literary property, or extended production thereof, or it had been produced with great or unusual success. Johnston v. 20th Century-Fox Film Corp., 82 Cal.App.2d 796, 813, 187 P.2d 474, [attained 'great popularity']; Aronson v. Fleckenstein, C.C., 28 F. 75, 76 ['met with signal success and public approval']; Frohman v. Payton, 34 Misc. 275, 68 N.Y.S. 849, ['achieved unusual success']; Hopkins Amusement Co. v. Frohman, 202 Ill. 541, 67 N.E. 391, 392 [produced 'in the principal cities of the United States' with large receipts]; Klaw v. General Film Co., Sup., 154 N.Y.S. 988 [presented continuously for more than 4 years 'throughout the United States and Canada with success']; Selig Polyscope Co. v. Unicorn Film S. Corp., Sup., 163 N.Y.S. 62, 63 ['successfully produced' for 5 successive seasons 'with marked acceptance by the public']; National Picture Theatres v. Foundation Film Corp., 2 Cir., 266 F. 208, 209 ['wide popularity [212 P.2d 582] over considerable portions of the United States']; Paramore v. Mack Sennett, Inc., D.C., 9 F.2d 66, 68 [attained 'considerable notoriety']; Amusement S. Corp. v. Academy Pictures D. Corp., 162 Misc. 608, 294 N.Y.S. 279, 293, 296, ['widespread popularity throughout the United States and in foreign countries' and a 'wide association in the minds of moving picture goers with a successful photoplay']; see, also, Warner Bros. Pictures v. Majestic Pictures Corp., 2 Cir., 70 F.2d 310; Patten v. Superior Talking Pictures, Inc., D.C., 8 F.Supp. 196.
It is clear that the play 'Slightly Scandalous' did not gain any public favor. It was moribund and had been so for more than two years at the time appellants released the picture. Neither the publicity nor the productions in Philadelphia and New York gave the title any real currency. We agree with appellants' counsel that to uphold 'a finding that the title of respondent's play had acquired a secondary meaning so that the general public at any time associated the title 'Slightly Scandalous' with respondent's play would mean that any play produced in a metropolitan center and advertised in the metropolitan papers would acquire a secondary meaning regardless of the length of its run, its acceptance by the general public, or of any other factor which would or would not make it stand out in the public's mind.'
We conclude that the evidence was not sufficient to warrant the implied findings that the title 'Slightly Scandalous' acquired and retained a secondary meaning in relation to respondent's play.
We need not consider appellants' claim that the damages awarded were excessive or their claims of error with respect to instructions. Suffice it to say that, in the event the cause is retried by a jury, they should be clearly and definitely instructed that respondent did not have any right in the mere title 'Slightly Scandalous' and that appellants had a legal right to use the title unless it had acquired and retained a secondary meaning as defined herein.
In view of the necessity of a reversal it is also unnecessary to discuss appellants' claim that counsel for respondent was guilty of prejudicial misconduct. The claim is based upon the asking of questions which did not prove or tend to prove any issue in the case and which, no doubt, created prejudice against appellants in the minds of the jurors. It is enough now to say that the questions were improper and should not be asked again.
Reversed.
SHINN, P. J., and WOOD, J., concur.