The opinion of the court was delivered by: HAIGHT
MEMORANDUM OPINION AND ORDER
Plaintiffs Lucille Hardy Price ("Mrs. Price"), Ida K. Laurel ("Mrs. Laurel") and Larry Harmon Pictures Corporation ("Harmon") commenced this action for injunctive relief and damages against defendants Worldvision Enterprises, Inc. ("Worldvision") and Mermac Productions, Ltd. ("Mermac"). Mrs. Price and Mrs. Laurel are the widows and beneficiaries, respectively, of those noted comedians of yesteryear, Oliver Hardy ("Hardy") and Stanley Laurel ("Laurel"). Harmon is engaged in the business of promoting and distributing films and of licensing toys and games. As the result of contractual relationships entered into in 1961, Harmon holds the exclusive right to utilize and merchandise the names, likenesses, characters and characterizations of Laurel and Hardy.
Worldvision is a distributor for independent television producers. Mermac is such a producer.
Plaintiffs seek to enjoin defendants from producing and distributing a television series entitled "Stan "n Ollie", in which the actors Chuck McCann and Jim MacGeorge, respectively, portray Hardy and Laurel. Plaintiffs now move for summary judgment pursuant to Rule 56, F.R.Civ.P. The motion asserts that, in the circumstances of the case, this Court's decision in Price et al. v. Hal Roach Studios, Inc., et al., 400 F. Supp. 836 (S.D.N.Y.1975) (hereinafter "Roach ") has Res judicata effect entitling them to the relief sought. The Court agrees. Summary judgment will be entered for plaintiffs.
The doctrine of Res judicata, where applicable, has a salutary effect in the law. Parties are relieved of the burden and expense of relitigating the merits of a claim previously established. Relitigation of decided issues are equally wasteful of the resources of the trial courts.
These considerations cannot, of course, be exalted to the point where parties are deprived of their right to litigate issues which, in the totality of circumstances, cannot be regarded as having been determined. Thus Res judicata is a limited concept, the limitations having been summarized by the Second Circuit in Herendeen v. Champion International Corp., 525 F.2d 130, 133 (2d Cir. 1975):
"For a judgment in a prior action to be a bar to reaching the merits in a subsequent action it is firmly established that the prior judgment must have been rendered by a court of competent jurisdiction, been a final judgment on the merits, and that the same cause of action and the same parties or their privies were involved in both suits."
Plaintiffs contend that Judge Stewart's judgment in Roach satisfies these elements, thereby entitling them to summary judgment against the present defendants. Defendants do not dispute that Roach was rendered by a court of competent jurisdiction and constitutes a final judgment on the merits. The points at issue are whether there is a sufficient identity between plaintiffs' causes of action, and a sufficient degree of privity between the defendants. To evaluate those questions, Roach and the case at bar must be examined in further detail.
In Roach the plaintiffs were the same as those in this action. The defendants included Hall Roach Studios, Inc. ("Roach"); Richard Feiner & Co. ("Feiner"), and Overseas Programming Companies, Ltd. ("Overseas"). The amended complaint asserted five causes of action against the defendants. Judge Stewart granted plaintiffs summary judgment on the second and fourth causes of action. We examine these causes of action.
Plaintiffs in Roach alleged, and Judge Stewart found, that as the result of contractual relations commencing in March, 1961, plaintiff Harmon acquired "in perpetuity the exclusive right to utilize and merchandise the names, likenesses, characters and characterizations of Laurel and Hardy." Roach at 838.
Defendant Roach claimed to be the holder of certain copyrights to Laurel and Hardy pictures. Roach also claimed to be the successor in interest to rights derived from certain employment agreements entered into between its predecessor corporation and Laurel and Hardy. That asserted interest led to the following chain of contracts, as described by Judge Stewart:
"Presumably relying on the above-acquired interest, Roach entered into an agreement on May 1, 1969 with defendant Feiner, revised by later agreement dated January 21, 1971, purporting to convey to Feiner the "world-wide exclusive merchandising rights' to the names and likenesses of Laurel and Hardy. On those same two dates, Feiner, in turn, purported to convey to Overseas those same exclusive merchandising rights outside the United States." Roach at 838.
Plaintiffs commenced their action against Roach and Feiner on January 29, 1971, adding Overseas as a defendant by subsequent amendment. Plaintiffs alleged, in summary, that:
". . . defendants are not legally entitled to the rights which they claim and that their claims are in conflict with the exclusive rights granted to plaintiff Harmon." Roach at 839.
Specifically, plaintiffs alleged in Roach that Roach, Feiner and Overseas were holding themselves out:
" . . . as having and possessing the exclusive right to utilize the names, likenesses, characters, characterizations and mannerisms of Laurel and Hardy in the commercial exploitation of products and services in all media and have licensed others:
"a) to sell or license the sale of various products including toys, games, goods and other commercial products bearing the names, photographs and/or likenesses of Stan Laurel and Oliver Hardy;
"b) to utilize photographs of Stan Laurel and Oliver Hardy and/or to employ actors to portray and imitate the stylized likenesses, characterizations and mannerisms of Laurel and Hardy in order to advise and promote the sale of products; and
"c) to utilize the services of actors to portray and imitate the stylized likenesses of Laurel and Hardy on television or other media." Amended complaint in Roach, at P 24, incorporated by reference in second cause of action.
These holdings out and license agreements were alleged by plaintiffs to have been without their authority, and to constitute a wrongful appropriation of their "commercial Laurel and Hardy rights." Amended complaint, P 24. The second cause of action, praying for injunctive relief against Roach, Feiner and Overseas, alleged (P 30):
"Defendants' actions in holding themselves out as possessing the exclusive right to utilize the names, likenesses, characters, characterizations and mannerisms of Laurel and Hardy, including the placement of advertisements in trade magazines in which defendants have proclaimed exclusive ownership of such rights, have created confusion and uncertainty in the market place as to the ownership of the commercial Laurel and Hardy rights and have seriously diluted and depreciated their value, all to plaintiffs irreparable damage."
In their fourth cause of action, arising out of the same factual background, the plaintiffs in Roach claimed money damages against Roach, Feiner and Overseas, and another individual whose status is not pertinent to the present case.
Following discovery procedures, plaintiffs moved on November 23, 1973 for summary judgment in Roach. Defendants cross-moved for summary judgment. Those motions were Sub judice before Judge Stewart when, in early 1974, plaintiffs learned that the present defendants, Worldvision and Mermac, had produced and were about to distribute a pilot for a television series entitled the "Stan "n Ollie" show, starring the actors McCann and MacGeorge, and commercially exploiting the names, likenesses, characters and characterizations of Laurel and Hardy. Plaintiffs contend, in the instant case, that whatever rights the present defendants assert to such commercial use derive from assignments or licenses granted to them by Roach and Feiner. In the Roach litigation plaintiffs urged that Roach and Feiner had no such rights to convey: within the context of that litigation, to Overseas. They thus viewed the Worldvision-Mermac venture as another example of wrongful conveyance by Roach and Feiner: this time to Worldvision and Mermac. Plaintiffs filed their complaint against the present defendants on February 14, 1974. The complaint sets forth the nature of the Roach litigation and the pendency of the summary judgment motions before Judge Stewart. The complaint in the case at bar alleges at P 16:
"Upon information and belief any claim by defendants Worldvision and Mermac to the exercise of the commercial Laurel and Hardy rights in connection with the production, distribution and exhibition of the video tape "Stan "n Ollie", derives by assignment or license from the "rights' claimed by Hal Roach Studios and/or Richard Feiner and Company; the existence and validity of said "rights' is the subject for determination on the pending motion for summary judgment in Price v. Roach."
Disposition of the Roach Case
Judge Stewart granted plaintiffs summary judgment on their second and fourth causes of action in an opinion rendered on June 26, 1975. He held that during their lifetimes Laurel and Hardy possessed a property "right of publicity" in their names and likenesses which they had never waived; which survived their death and was descendible to their widows as sole beneficiaries of their estates; and which had been legally and effectively conveyed to Harmon. Roach, on the other hand, was found by Judge Stewart never to have obtained such rights. In consequence, Feiner never obtained such rights from Roach, and had no valid basis to grant a license to Overseas.
In these circumstances, Judge Stewart entered a permanent injunction which reads in pertinent part as follows:
"ORDERED, that defendants Hal Roach Studios, Inc., Richard Feiner and Co., Inc., Overseas Programming Companies, Ltd., Richard Feiner and Herbert Gelbspan, their officers, agents and all persons acting on their behalf or in concert or cooperation with them are hereby permanently restrained and enjoined from using, selling, licensing, leasing, authorizing the use of or otherwise conveying or holding themselves out as in any manner authorized or empowered to use, sell, license, lease, or authorize the use of, or convey the names, likenesses, characters, and characterizations, of Stan Laurel and Oliver Hardy, (including, without limitation, use of their photographs or other reproductions of their physical likenesses, The impersonation of their physical likenesses or appearances, costumes and mannerisms, and/or the simulation of their voices ) for advertising or commercial purposes, including their use in or in connection with publications, recordings, clothing, toys, games, foods, or other product or service, merchandising, or other product or service endorsements, or in the production of animated cartoons or motion pictures, separate and apart from the rights possessed by defendants Hal Roach Studios, Inc., Richard Feiner and Co., Inc. and Overseas Programming Companies, Ltd. by virtue of their copyrights in and to certain Laurel and Hardy motion pictures including all renewals and extensions thereof. . . ." (emphasis added).
The Roach and Feiner defendants took no appeal from Judge Stewart's injunctive order. The present defendants do not deny, within the Res judicata context, that the judgment in Roach was rendered by a court of competent jurisdiction and constitutes a final judgment on the merits. Thus the first elements enumerated in Herendeen, supra, are satisfied. The decisive question is whether "the same cause of action and the same parties or their privies were involved in both suits." Herendeen at 133. We turn to those questions.
Plaintiffs contend, in essence, that (1) they assert precisely the same proprietary right that was vindicated in Roach ; (2) the present defendants are pursuing precisely the same sort of commercial activities which were enjoined in Roach ; and (3) the defendants base their entitlement to such activities solely upon a purported conveyance to them from Roach and Feiner of rights which were held not to exist in Roach.
It is evident that, if no triable issue of fact exists with respect to the existence of these elements, then Res judicata entitles plaintiffs to comparable injunctive relief against the present defendants. The first and second elements would establish the identity of the causes of action; and the third, the privity of the parties involved in the suits.
A. The Nature of the Right Asserted.
The first element, The identity of plaintiffs' asserted right, clearly appears. Plaintiffs assert at bar the identical right which, by virtue of identical facts, they asserted in Roach. It is that "right of publicity" which Judge Stewart recognized and enforced in Roach. The right relates to the "commercial exploitation" of a person's "name and likeness." 400 F. Supp. at 843. Because of "the purely commercial nature of the protected right," it is deemed a "property right." Id. at 844. The Second Circuit, citing Roach with approval in Factors, Inc. v. Pro Arts, Inc., 579 F.2d 215 (decided June 27, 1978), summarized Judge Stewart's conclusions as follows:
"Price involved a dispute over the ownership of the commercial right to use the names and likenesses of Stanley Laurel and Oliver Hardy ("Laurel and Hardy') following the death of the renowned comedians. The exclusive right to exploit the comedy team commercially was assigned to co-plaintiff Larry Harmon Pictures Corporation by Stan Laurel during his lifetime, by Oliver Hardy's widow and sole heir under Hardy's will, Lucille Hardy Price, and by Laurel and Hardy's production company, Laurel and Hardy Feature Productions. Several years later when the Price defendants sought to utilize the name and likenesses of Laurel and Hardy, the owners sued. The district court held that the deaths of the actors did not extinguish the right of publicity held by the grantee of the right." At 221.
It is that same right which the same plaintiffs assert in the case at bar.
B. The Nature of Defendants' Activities.
It is equally apparent that the second element, The identity of the present defendants' activities, is also present. The defendants in Roach claimed "exclusive or concurrent right to commercial use of the names and likenesses of Laurel and Hardy." 400 F. Supp. at 839. The Second Circuit in Factors, Inc. succinctly summarized the activities of the defendants in Roach : they "sought to utilize the name and likenesses of Laurel and Hardy." At 221. It cannot be gainsaid that the present defendants have embarked upon a comparable commercial usage of "the name and likenesses of Laurel and Hardy." Defendants' television pilot and proposed series, "Stan "n Ollie", features actors manifestly made up to resemble Laurel and Hardy; any doubt is dispelled by the text accompanying Worldvision's printed flyer
advertising the series, which is subtitled:
"Laurel and Hardy The Perfect Combination for Primetime Access Programming";
"Chuck McCann plays the explosive Ollie opposite Jim Mac George's portrayal of the lovable, bumbling Stan. They get involved in all types of side-splitting situations which seem to end in total chaos with Ollie's indignant disclaimer " . . . a fine mess you've gotten us into!' "
The present defendants' "Stan "n Ollie" filmed television series quite obviously constitutes commercial activity of the kind embraced by Judge Stewart's injunction in Roach, which extended, Inter alia, to:
" . . . the impersonation of (Laurel and Hardy's) physical likenesses or appearances, costumes and mannerisms, and/or the simulation of their voices, for advertising or commercial purposes, including their use in or in connection with . . . the production of animated cartoons or motion pictures . . ."
In the face of this specific language, it is idle for defendants to argue that plaintiffs' protected rights are "limited to the use of the names and likenesses of the team in conjunction with the sale of products."
Defendants' affidavits insist that the litigation in Roach involved only "merchandising", which defendants define as follows:
" "Merchandising' is the use of a person's name, portrait, or picture for pure advertising purposes. Thus for example there may be available to the public Laurel and Hardy T-shirts, dolls, toys, etc."