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ROONEY v. COLUMBIA PICTURES INDUS.

April 19, 1982

MICKEY ROONEY, on behalf of himself and all others similarly situated, Plaintiff,
v.
COLUMBIA PICTURES INDUSTRIES, INC.; METRO-GOLDWYN-MAYER, INC.; PARAMOUNT PICTURES CORP.; RKO GENERAL, INC.; TWENTIETH CENTURY-FOX FILM CORP.; UNITED ARTISTS CORP.; UNIVERSAL CITY STUDIOS, INC.; and WARNER BROS. INC., Defendants



The opinion of the court was delivered by: CONNER

OPINION AND ORDER

Plaintiff Mickey Rooney ("Rooney") brings this action on behalf of himself and a purported class consisting of all performers in motion picture films produced by defendants or their predecessors and affiliates, the principal photography of which films was completed prior to February 1, 1960 ("pre-1960 Films"). Defendants, eight major producers or distributors of motion picture films, have moved to dismiss the complaint for failure to state a claim upon which relief can be granted, Rule 12(b)(6), F.R.Civ.P., or alternatively for summary judgment, Rule 56, F.R.Civ.P. Rooney has also moved, pursuant to Rule 23, F.R.Civ.P., for certification of the above-defined class with himself as its representative. For the reasons that follow, defendants' motion for summary judgment is granted and the action is dismissed. *fn1"

 The complaint is in four counts. Count One alleges a conspiracy in restraint of trade in violation of Section 1 of the Sherman Antitrust Act, 15 U.S.C. § 1. Specifically, Rooney claims that, beginning at least as early as July 1, 1977, defendants conspired among themselves and with unnamed others to refuse to deal with Rooney regarding his "publicity rights" in pre-1960 films, with the purpose and effect of commercially exploiting such rights in the commercial television, pay television and audio-visual device markets, as well as in connection with the sale of merchandise *fn2" (collectively "alternative markets"), all without compensating Rooney for such exploitation.

 Count Two alleges that defendants "wrongfully have received and continue to receive all of the profits from their commercial exploitation of the intangible property rights owned by plaintiff and the members of the class."

 Count Three claims that defendants have violated the Lanham Act, 15 U.S.C. § 1125(a), by falsely representing (1) that pre-1960 films made for exhibition in movie theatres could be commercially exploited in the alternative markets, and (2) that use of pre-1960 films in the alternative markets was sponsored, endorsed or approved by Rooney and the members of the purported class.

 Count Four alleges that defendants "have by their acts of unfair competition misappropriated the names, likenesses, images, pictures, goodwill, reputations and valuable property rights of plaintiff and the members of the class...."

 The common premise underlying each of these claims is the contention of Rooney that defendants, while having secured the rights to exhibit pre-1960 films containing Rooney performances in movie theatres, did not acquire the rights to exhibit such films in the alternative markets. It is because I find this premise to be incorrect on the basis of the undisputed or uncontroverted facts of record that I grant defendants' motion for summary judgment. The basis for my conclusion requires a summary of the contractual relationships between Rooney and each of the defendants.

 1. Metro-Goldwyn-Mayer, Inc. ("MGM")

 On August 29, 1933, Rooney signed a contract with MGM to act in the "photoplay" "Fire Chief" (this contract will hereafter be referred to as "MGM 1"). Then thirteen years old, Rooney was paid $ 300 per week. The contract provided at paragraph 4 that

 
"the term 'photoplay' as used in this agreement shall be deemed to include motion pictures produced and/or exhibited with sound and voice recording, reproducing and/or transmitting devices, radio devices, and all other improvements and devices which are now or may hereafter be used in connection with the production and/or exhibition and/or transmission of any present or future kind of motion picture production. The producer shall have the right to photograph and/or otherwise produce, reproduce, transmit, exhibit, distribute, and exploit in connection with the said photoplay any and all of the artist's acts, poses, plays and appearances of any and all kinds hereunder, and shall further have the right to record, reproduce, transmit, exhibit, distribute, and exploit in connection with said photoplay the artist's voice, and all instrumental, musical, and other sound effects produced by the artist in connection with such acts, poses, plays and appearances. The producer shall likewise have the right to use and give publicity to the artist's name and likeness, photographic or otherwise, and to recordations and reproduction of the artist's voice and all instrumental, musical, and other sound effects produced by the artist hereunder, in connection with the advertising and exploitation of said photoplay. The rights in this paragraph granted to the producer shall inure to the benefit not only of the producer, but also to the benefit of all persons who may hereafter acquire from the producer any right to distribute, transmit, exhibit, advertise, or exploit said photoplay."

 On March 29, 1934, Rooney signed a contract with MGM to act in the "photoplay" "Three Men" for $ 300 per week ("MGM 2"). MGM's rights in the "photoplay" were defined in the same broad terms quoted above from MGM 1.

 On August 22, 1934, Rooney signed an exclusive services contract with MGM ("MGM 3"). Under this contract, in paragraph 2, Rooney agreed

 
"... that he will render his services as a radio performer, not only by broadcasting in person, but also by making electrical transcriptions and/or by any other present or future methods or means; that he will render his services as an actor in television productions; and that he will render his services in connection with the broadcasting and/or transmission of his likeness and/or voice by means of television, radio and/or otherwise, whether such broadcasting and/or transmission be either directly or indirectly in connection with or independent of photoplays."

 The contract further provided in paragraph 4 that

 
"the artist expressly gives and grants to the producer the sole and exclusive right to photograph and/or otherwise reproduce any and all of his acts, poses, plays and appearances of any and all kinds during the term hereof, and to record his voice and all instrumental, musical and other sound effects produced by him, and to reproduce and/or transmit the same, either separately or in conjunction with such acts, poses, plays and appearances, as the producer may desire; and further gives and grants to the producer solely and exclusively all rights of every kind and character whatsoever in and to the same, or any of them, perpetually, including as well the perpetual right to use the name of the artist and pictures or other reproductions of the artist's physical likeness, and recordations and reproductions of the artist's voice, in connection with the advertising and exploitation thereof, as well as in connection with the advertising and/or exploitation of any other services which may be required of the artist hereunder."

 On November 6, 1937, August 8, 1940 and February 16, 1945, Rooney executed new exclusive services contracts with MGM ("MGM 4," "MGM 5" and "MGM 6," respectively.) With one exception not relevant here, *fn3" MGM's rights in Rooney's performances were defined by provisions identical to those quoted above from MGM 3. These contracts also included television transmissions and exhibitions within the definition of "photoplay." Rooney's salary under these contracts grew to $ 2,500 per week, plus frequent and substantial bonuses.

 On June 25, 1948, Rooney bought his way out of his exclusive contract with MGM. The contract embodying that agreement ("MGM 7") provided that Rooney released MGM from any claims he might have had against MGM. Paragraph 1 of the contract further provided:

 
"Notwithstanding anything herein set forth, nothing herein contained is intended or shall be construed as a waiver or surrender by us [MGM] of any right of ownership in or to any photoplays heretofore produced in whole or in part by us with your [Rooney's] assistance; or of the right to produce or reproduce in any manner whatsoever your pictures and photographs and/or recordations and/or reproductions of your voice and/or of all instrumental, musical and other sound effects heretofore made for us by you; or of any right whatsoever to exhibit, release, produce, reproduce or otherwise deal in or with respect to the foregoing, or any of them, or any right of ownership or control heretofore acquired by us in and to any and all work heretofore done by you for us during your employment by us; or of the full benefit of any and all representations, warranties and indemnities heretofore made by you in our favor, or of our right, or the right of our licensees, to use your name and/or photographs and/or recordings and/or reproductions of your voice for advertising and publicity purposes in connection with work heretofore done by you for us; it being distinctly understood and agreed that we do hereby expressly reserve to ourselves all of the rights and privileges in this sentence referred to."

 As part of this arrangement, on that same date of June 25, 1948, Rooney signed a short-term exclusive services contract ("MGM 8") and a multiple picture agreement ("MGM 9") with MGM. MGM's rights in Rooney's performances under MGM 8 were governed by language identical to that appearing in MGM 6. MGM 9 provided at paragraph 5 that

 
"the producer shall have the right to photograph and/or otherwise reproduce any and all of the acts, poses, plays and appearances of the artist of any and all kinds during each employment period and to record the voice of the artist and all instrumental, musical and other sound effects produced by him and to reproduce and/or transmit such photographs and recordings either separately or in conjunction with such acts, poses, plays and appearances as the producer may desire and the producer shall own, fully and exclusively, all rights of every kind and character whatsoever in and to such photographs and recordings, perpetually, including the right to use all or any part of them in any photoplay or photoplays as the producer may desire."

 On January 8, 1952, Rooney and MGM terminated MGM 8 and MGM 9 by a written agreement ("MGM 10"). MGM 10 contained releases by both parties as to any claims arising out of MGM 8 and MGM 9. MGM 10 also included a reservation-of-rights clause materially identical to that quoted above from MGM 7.

 On January 8, 1952, Rooney and MGM executed a contract covering the photoplay "A Slight Case of Larceny" ("MGM 11"). Paragraph 11 of that contract provided:

 
"We [MGM] shall have the right to photograph you [Rooney] and your performances, and thereby or otherwise to reproduce your likeness and any and all of your acts, poses, plays and appearances of any and all kinds hereunder, by any present or future methods or means, and the right to record your voice and all instrumental, musical and others sound effects produced by you hereunder, and to reproduce and/or transmit the same, either separately or in conjunction with such acts, poses, plays and appearances as aforesaid, as we may desire. We (and our successors and assigns) shall be entitled to and shall own solely, exclusively and perpetually, all rights of every kind in and to all of the foregoing, and in and to all other results and proceeds of your services hereunder, without restriction or limitation of any kind, including (but not limited to) the sole, exclusive and perpetual right to reproduce and rerecord all or any of said photographs, reproductions and recordations, by any present or future methods or means, and to perform, exhibit and reproduce said photographs, recordings and reproductions or any of them at any time or times, either separately or in combination, in and in connection with said photoplay and otherwise, and in combination with photographs, recordations and reproductions of or made by any other person or persons. You hereby transfer and assign to us all of the results and proceeds of your services hereunder, and all rights therein, including but not being limited to, the rights specified above, without reservation, condition or limitation of any kind."

 Three additional contracts ("MGM 12," "MGM 13" and "MGM 14") were entered into between MGM and Fryman Enterprises ("Fryman") on January 21, 1958, January 14, 1959 and September 25, 1959, covering Rooney's performances in the films "Andy Hardy Comes Home," "The Big Operator" and "Platinum High School," respectively. Fryman was a corporation formed by Rooney and its principal asset was Rooney's services. Each of MGM 12, MGM 13 and MGM 14 provided:

 
"We [Fryman] further warrant and represent that our said agreement with Mr. Rooney provides that we own and are entitled to all rights of every kind and character, exclusively and perpetually in and to all of the results and proceeds of his services and that we have the perpetual right to use, and to allow others to use his name and pictures, photographs and other reproductions of his likeness, and recordations and reproductions of his voice and of the instrumental, musical and other sound effects produced by him, in and in connection with the advertising and exploitation of said photoplays."

 In MGM 12, Rooney further specified:

 
"I hereby acknowledge and confirm the fact that FRYMAN ENTERPRISES, INC., has the right to furnish my services as hereinabove set forth and I specifically agree for your [MGM] benefit that I will perform the services herein referred to and that, in connection with the advertising and exploitation of said photoplay, you will have the same rights in and to the results and proceeds of my services and in and to the use of my name, voice and likeness as I have heretofore granted to FRYMAN ENTERPRISES, INC."

 Correspondingly, MGM 13 and MGM 14 provided:

 
".. . we [Fryman] agree that you [MGM] shall own and we hereby assign, transfer and set over to you, your successors and assigns, all such rights in and with respect to all services rendered by the Artist in connection with said photoplay."

 2. Columbia Pictures Industries, Inc. ("Columbia").

 On November 1, 1949, Rooney signed a contract ("Columbia 1") with Columbia for the photoplay then tentatively entitled "Freddie the Great." Rooney was paid $ 100,000 for that film. Sections IV-1 and IV-2 of Columbia 1 provided:

 
"The Artist grants to the Corporation the sole and exclusive right to photograph or otherwise reproduce all or any part of the Artist's performances, acts, poses, plays and appearances of every kind and nature made or done by the Artist in connection with the picture; to record or otherwise reproduce his voice and all musical, instrumental or other sound effects produced by him in connection with the picture; to reproduce and transmit the same either separately or in conjunction with such performances, acts, poses, plays and appearances as the Corporation may desire, and perpetually to exhibit, transmit and reproduce, and license others to exhibit, transmit and reproduce (whether by means of motion pictures, radio, television, televised motion pictures, printing, or any other means now known or unknown) any of such reproductions in connection with the picture, or the advertising or exploitation of the picture."
 
* * * * * *
 
"The Artist grants to the Corporation the perpetual but nonexclusive right to use, and to license others to use his name and reproductions of his physical likeness and reproductions of his voice, such use to be for the purpose of advertising or exploiting the picture."

 On August 10, 1950, Rooney and Columbia executed a three-picture contract ("Columbia 2"), under which Rooney was to receive fixed sums and a share of the profits of the three films, including television revenues. As to Columbia's rights to use the films in alternative markets, Columbia 2 contained paragraphs materially indistinguishable from the above-quoted provisions from Columbia 1.

 By letter agreement dated February 22, 1957, ("Columbia 3") Rooney, in exchange for $ 30,000, transferred to Columbia

 
"... all of [his] right, title, and interest in and to any and all monies remaining payable to [him] pursuant to said employment agreement of August 10, 1950, as heretofore modified and amended, for the motion pictures SOUND, OFF, ALL ASHORE, and DRIVE A CROOKED ROAD, including but not limited to any and all monies derived from the exhibition of said motion pictures by means of television."

 On March 22, 1957, Rooney contracted to appear in the Columbia photoplay "Operation Madball" for a weekly salary of $ 12,500 ("Columbia 4"). Columbia 4 incorporated by reference a schedule of contract terms contained in the 1952 Collective Bargaining Agreement between the Screen Actors Guild ("SAG" or "the Guild") and several movie producers. Section 30 of Schedule C, incorporated by reference, provided:

 "RIGHTS GRANTED TO PRODUCER

 
"The term 'photoplay' as used in said free lance contract shall be deemed to include motion pictures produced and/or exhibited with sound and voice recording, reproducing and/or transmitting devices, radio devices, and all other improvements and devices, including television, which are now or may hereafter be used in connection with the production and/or exhibition and/or transmission of any present or future kind of motion picture production. The Producer shall have the right to photograph and/or otherwise produce, reproduce, transmit, exhibit, distribute, and exploit in connection with the said photoplay any and all of the player's acts, poses, plays and appearances of any and all kinds hereunder, and shall further have the right to record, reproduce, transmit, exhibit, distribute, and exploit in connection with said photoplay the player's voice, and all instrumental, musical, and other sound effects produced by the player in connection with such acts, poses, plays and appearances. The Producer shall likewise have the right to use and give publicity to the player's name and likeness, photographic or otherwise, and to recordations and reproductions of the player's voice and all instrumental, musical, and other sound effects produced by the player hereunder, in connection with the advertising and exploitation of said photoplay. The rights in this section granted to the Producer shall inure to the benefit not only of the Producer, but also to the benefit of all persons who may hereafter acquire from the Producer any right to distribute, transmit, exhibit, advertise, or exploit said photoplay."

 3. Twentieth Century-Fox Film Corp. ("Fox").

 Rooney acted in only three pre-1960 movies produced by Fox. The first two were made while Rooney was under exclusive contract to MGM, and Rooney's services were "loaned" by MGM to Fox. It is not disputed that the assignment of rights provision in MGM 3, quoted above, applied respectively to Rooney and Fox in connection with these films.

 The third movie, tentatively titled, "A Nice Little Bank that Should Be Robbed," was the subject of a January 13, 1958 contract between Fox and Fryman ("Fox 1"). Fox provided at paragraph 8:

 
"In addition to the services rendered hereunder, we [Fox] shall be entitled to and own all of the results and proceeds thereof (including, but not limited to, all rights throughout the world, of production, manufacture, recordation and reproduction by any art or method, including television and/or radio broadcasting, and of copyright, trademark and patent) whether such results and proceeds consist of literary, dramatic, musical, motion picture, mechanical or any other form of works, themes, ideas, compositions, creations or products. We shall also acquire under this agreement all of the rights generally known in the field of literary and musical endeavor as the 'moral rights of authors'."

 The terms of Fox were expressly consented to in writing by Rooney.

 4. Universal City Studios, Inc. ("Universal")

 Rooney appeared in two pre-1960 films produced by Universal. The first was "Francis Goes to the Haunted House," pursuant to a February 7, 1956 contract ("Universal 1"). Universal 1 provided at paragraph 7:

 
"We [Universal] shall have the right to photograph and/or otherwise reproduce any and all of your [Rooney] acts, poses, plays and appearances hereunder, to record your voice and all instrumental, musical and other sound effects produced by you, and to reproduce and/or transmit such photographs and recordings, either separately or together, as we may desire in connection with said photoplay. We shall own all rights of every kind and character whatsoever in and to all such photographs and recordings, and all other results and proceeds of your services hereunder perpetually, including, but not limited to, the right to use all or any part thereof in or in connection with said photoplay and the advertising and exploitation thereof and/or otherwise as we may desire in connection with said photoplay.
 
* * * * * *
 
"We shall also have the perpetual right to use your name, voice and likeness on the positive prints of and in connection with the advertising and exploitation of said photoplay and all of the photographs, recordings and other results and proceeds of your services hereunder."

 Section 2 of Universal 1 further provided that

 
"the word 'photoplays,' as used herein, includes, but it not limited to, motion pictures produced, exhibited with and/or accompanied by sound and/or voice recording, reproducing and/or transmitting devices, radio devices, television devices and all other improvements and devices which are now or may hereafter be used in connection with the production, ...

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