rights to "Bridge On The River Kwai" in Canada and the United
States lacked consideration; and (2) Academy's royalty
interest in the movie is insufficient to confer Lanham Act
Leisure Time argues that the February 2, 1959, agreement
between Columbia and Albatross Trust was unsupported by
consideration. As discussed earlier, Academy, through its
predecessor Albatross Trust, obtained a 25% royalty interest
to "Bridge On The River Kwai" from Horizon in the 1956 royalty
agreement. Columbia obtained rights to the movie from Horizon
in the January 5, 1959 agreement subject to Albatross Trust's
royalty interest created in the 1956 royalty agreement. In the
February 2, 1959 agreement, Columbia agreed with Albatross
Trust to expand Albatross Trust's rights to receive royalties
from the United States and Canada in order to settle its
existing claims for overdue royalties. Albatross Trust, now
Academy, has been receiving royalties on revenues in the
United States under this contract for the past 31 years.
A contract is supported by consideration if there is a
bargained for exchange of promises. Banque Arabe et Int'l
D'Investissement v. Bulk Oil, Inc., 726 F. Supp. 1411, 1419
(S.D.N.Y. 1989). A promise is bargained for "if it is sought by
the promisor in exchange for his promise and is given by the
promisee in exchange for that promise." Restatement (Second) of
Contracts § 71 (1979). Where parties to a contract are
satisfied with their bargain, a third party "may not challenge
the contract's validity on the basis of alleged insufficient
consideration." OPE Shipping, Ltd. v. Allstate Ins. Co., Inc.,
687 F.2d 639, 643 (2d Cir.), cert. denied, 460 U.S. 1069, 103
S.Ct. 1523, 75 L.Ed.2d 946 (1983).
Neither Columbia or Academy has challenged the sufficiency
of consideration in the February 2, 1959 agreement between
them. The parties satisfaction with the agreement is evidenced
by the fact that Academy has been receiving revenues from
Columbia pursuant to the agreement for the past 31 years.
Leisure Time, as a third party, therefore has no legal basis
to challenge the sufficiency of consideration supporting the
agreement. Even if Leisure Time had standing to challenge the
agreement, the agreement was clearly supported by
consideration. Columbia sought to settle Albatross Trust's
existing claims for royalty payments and, in order to do so,
promised Albatross Trust an expanded region from which to
receive royalties. In turn, Albatross Trust promised to drop
its royalty claims in exchange for the expanded geographical
region from which to receive royalties.
Leisure Time next contends that Academy's royalty interest
in "Bridge On The River Kwai" is insufficient to bring a
trademark infringement claim because Columbia owns all the
property rights to the film. Essentially, Leisure Time argues
that Academy does not have Lanham Act standing. Academy's
royalty interest in the revenues from the movie, however, is
sufficient to confer standing under § 43(a) of the Lanham Act.
Any "commercial party" which "has a reasonable interest to
be protected" has standing under § 43(a) of the Lanham act.
Nat'l Assoc. of Pharmaceutical Mfr. v. Ayerst Laboratories,
850 F.2d 904, 915 (2d Cir. 1988). More specifically, a royalty
interest, stripped of all other property rights, is sufficient
to confer standing under § 43(a) of the Lanham. PPX Enterprises
v. Audiofidelity, Inc., 746 F.2d 120, 125 (2d Cir. 1984).
Academy's royalty interest in "Bridge On The River Kwai" was
created through its predecessor Albatross Trust in the 1956
royalty agreement with Horizon and expanded in the February 2
1959 agreement with Columbia. Academy therefore has a royalty
interest in "Bridge On The River Kwai;" this interest is
sufficient to give Academy standing under § 43(a) of the Lanham
2. Albatross Trust's Agreement Not To Sue Columbia
Paragraphs 15 and 16 of the February 2, 1959 agreement
between Albatross Trust and Columbia contain Albatross Trust's
covenants not to sue Columbia or its affiliates for certain
¶ 15, Albatross Trust agreed that it would not sue Columbia or
its affiliates for any claims arising out of Columbia's
distribution of "Bridge On The River Kwai" in the Western
Hemisphere other than for claims arising out of its rights
under the contract.*fn5 Under ¶ 16, Albatross Trust promised
it would not sue Columbia or its affiliates asserting a claim
to "Bridge On The River Kwai" other than a claim based on its
royalty interest.*fn6 Leisure Time argues that Academy,
through Albatross Trust, agreed in ¶¶ 15 and 16 of the February
2, 1959 agreement not to sue Columbia or any of its affiliates,
including Tri-Star, for any claims relating to "Bridge On The
River Kwai." Leisure Time's proposed interpretation, however,
is too broad.
Essentially, Albatross Trust agreed not to sue Columbia or
its affiliates for any claims arising from its distribution of
the movie "Bridge On The River Kwai" or for any claims to the
movie except for claims arising from its royalty interest
under the contract. Academy, however, is not suing here on a
claim arising out of the distribution of "Bridge On The River
Kwai," nor is Academy asserting a claim to the movie. Rather,
Academy is suing to prevent the distribution of another movie
with a title confusingly similar to "Bridge On The River
Kwai." Academy has brought this lawsuit to protect its royalty
interest. Academy's trademark infringement claim is therefore
excepted from both ¶¶ 15 and 16 because it is a claim arising
from its right to receive royalties under the February 2, 1959
agreement. Thus, Academy is not precluded from bringing its
trademark infringement claim against Tri-Star, Columbia's
affiliate since 1987.
Furthermore, nothing in the covenants prevent Academy from
suing Leisure Time. The covenants in ¶¶ 15 and 16 run to
Columbia and its subsidiaries and affiliates, and do not apply
to any third parties. Therefore, even if the covenants barred
Academy from suing Tri-Star, they would not bar Academy from
suing Leisure Time under the Lanham Act to enjoin the release
of the movie "Return From The River Kwai." Such a suit by
Academy against Leisure Time could clearly impair or interfere
with Tri-Star's distribution rights under the 1986 distribution
agreement and would therefore constitute a breach of ¶ 9(a)(2)
of Exhibit "A."
3. Failure To Protest Before the MPAA
As discussed earlier, Leisure Time registered the title
"Return From The River Kwai" with the MPAA. Columbia filed a
protest to the title with the MPAA claiming that it was
confusingly similar to "Bridge On The River Kwai." The protest
was not considered by the MPAA, however, because it was
received a day after the MPAA's seven day deadline.
Leisure Time contends that Columbia's failure to file its
objection with the MPAA within the proper time frame should
preclude Academy from raising a Lanham Act claim in federal
court. It is doubtful, however, whether Columbia's procedural
error with the MPAA could preclude it from bringing a Lanham
Act claim in federal court, let alone preclude Academy from
bringing such a claim. Cf. John Lemmon Films, Inc. v. Atlantic
Releasing Corp., 617 F. Supp. 992, 994-95 (D.C.N.C. 1985)
(plaintiff's failure to file an objection with the MPAA did not
preclude its preliminary injunction action under the Lanham Act
to prevent defendant's distribution of a film with a title
confusingly similar to plaintiff's service mark). Academy is
not a member of the MPAA, did not receive notice of the
intended registration of the title "Return From The River
Kwai," and had no opportunity to object to Leisure Time's
registration of that title with the MPAA. Academy is therefore
not barred from bringing a Lanham Act claim by Columbia's
failure to file a timely protest with the MPAA.
4. Leisure Time's Motion For Summary Judgment On Academy's
Trademark Infringement Claim
Leisure Time argues that it is entitled to summary judgment
against Academy on Academy's trademark infringement claim.
Academy contends that the movie title "Return From The River
Kwai" is confusingly similar to its movie title "Bridge On The
River Kwai," which has attained secondary meaning. If Leisure
Time's motion were granted, Leisure Time argues that Academy
would have no claim that could impair Tri-Star's rights and
that Leisure Time therefore would not have breached the
warranty in ¶ 9(a)(2) of Exhibit "A." Leisure Time's motion for
summary judgment, however, must be denied because there are
genuine issues of material fact concerning Academy's claim.
Section 43(a) of the Lanham Act creates civil liability for
any person who "uses a false designation of origin" or "any
false description or representation" in connection with any
goods or services the person places into commerce. 15 U.S.C. § 1125(a)
(1982). For a film's title to be protected under §
43(a), the title must have attained some "secondary meaning."
Orion Pictures Co., Inc. v. Dell Publishing Co., Inc.,
471 F. Supp. 392, at 395 (S.D.N.Y. 1979). Secondary meaning in a
title occurs when the title is sufficiently well known that
consumers associate it with a particular author's work. Id.
Where the title of a movie or a book has acquired secondary
meaning, "the holder of the rights to that title may prevent
the use of the same title or a confusingly similar title by
other authors." Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir.
Interpreting the Lanham Act broadly to protect movie titles
invokes first amendment concerns because movie titles are a
form of artistic expression. Id. at 997-98. Nonetheless, laws
such as the Lanham Act seek to foster free expression by
protecting author's works. Id. at 998. In order to balance
these concerns, when examining a Lanham Act claim involving
artistic works, a court must decide "whether the public
interest in avoiding consumer confusion outweighs the public
interest in free expression." Id. at 999.
In its motion for summary judgment on Academy's Lanham Act
claim, Leisure Time relies exclusively on the Second Circuit's
decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
Leisure Time argues that Rogers established a First Amendment
privilege for film titles that have artistic relevance to the
subject matter of the film. Leisure Time, however, asks this
Court to interpret the privilege established in Rogers too
In Rogers, Ginger Rogers, the famous star of Hollywood
musicals, sued under the Lanham Act to prevent the use of the
title "Ginger and Fred" for a fictional movie that obliquely
related to Ginger Rogers and Fred Astaire. Id. at 996. Rogers
claimed that the movie violated the Lanham Act because it
created the false impression that the movie was either about
her or sponsored by her. Id. at 997. The Court stated that in
the specific instance of an allegedly misleading title using a
celebrity's name, the balance of the public interest in
avoiding consumer confusion and the public interest in free
expression will normally not support application of the Lanham
Act "unless the title has no artistic relevance to the
underlying work whatsoever, or if it has some artistic
relevance, unless the title explicitly misleads as to the
source or the content of the work." Id. at 999. In a footnote
to the sentence containing this holding, the Court went on to
state that this limiting construction of the Lanham Act "would
not apply to misleading titles
that are confusingly similar to other titles." Id. at 999 n. 5.
The Court reasoned that "[t]he public interest in sparing
consumers this type of confusion outweighs the slight public
interest in permitting [the] use of such titles." Id.
Thus, despite Leisure Time's reliance on Rogers, the Court's
holding in that case only applies to situations where a
celebrity's name is used in a title and is therefore not
applicable to Academy's claim here that the titles "Bridge On
The River Kwai" and "Return From The River Kwai" are
confusingly similar. Indeed, the footnote to the Court's
holding in Rogers specifically states that it does not apply to
claims, like Academy's, of confusingly similar titles.
Accordingly, Leisure Time's reliance on Rogers is misplaced and
their motion for summary judgment on Academy's Lanham Act claim
must be denied so that a complete factual record can be
established to demonstrate both whether "Bridge On The River
Kwai" has attained secondary meaning and whether a reasonable
consumer would find the title "Bridge On The River Kwai"
confusingly similar to "Return From The River Kwai."
The existence of a genuine issue of material fact in
Academy's trademark infringement claim is more than sufficient
to constitute a "claim" under ¶ 9(a)(2) of Exhibit "A." The
existence of Academy's claim threatens to interfere with
Tri-Star's rights to distribute "Return From The River Kwai."
Leisure Time has therefore breached its warranty to Tri-Star
under ¶ 9(a)(2) of Exhibit "A."
C. Provisions of the Contract Relating to Breach
As a result of Leisure Time's breach of ¶ 9(a)(2) of Exhibit
"A," Tri-Star argues that it should be allowed to terminate the
1986 distribution agreement pursuant to the provisions relating
to breach in the agreement. Paragraph 7(a)(2) of Exhibit "A" to
the agreement provides that an event of default includes any
breach of warranty "which materially affect Tri-Star's
rights."*fn7 Consequently, a breach of ¶ 9(a)(2) of Exhibit
"A" constitutes an event of default. Paragraph 7(e) of Exhibit
"A" to the agreement goes on to provide that if an event of
default occurs and it is not cured within ten days after notice
from Tri-Star specifying such event of default, Tri-Star shall
have the right any time thereafter to terminate the
agreement.*fn8 Tri-Star provided such notice to Leisure Time
in a December 5, 1988 letter which stated that Academy
threatened to sue for any title containing "River Kwai," and
that such a claim breached Leisure Time's warranty in ¶ 9(a)(2)
of Exhibit "A." Leisure Time did not cure the default. Instead,
it threatened to sue Tri-Star.
Leisure Time argues that Tri-Star's notice was defective
because it referred to ¶ 9(a)(2) of Exhibit "A," rather than ¶
12 of the Term Sheet. This argument is unavailing for two
reasons. First, as previously discussed, ¶ 9(a)(2) of Exhibit
"A" was the appropriate warranty for Tri-Star to mention.
Second, ¶ 7(e) of Exhibit "A" states that Tri-Star must provide
notice of the "event of default" and Tri-Star provided such
notice by specifically referring to Academy's threatened
lawsuit. Thus, Tri-Star has completely satisfied its
obligations under the provisions in the 1986 distribution
agreement regarding Leisure Time's breach of warranty. That
agreement required Leisure Time to deliver the motion picture
free of all claims against it. Because Leisure Time did not do
so, Tri-Star is entitled to terminate the agreement.
D. Leisure Time's Tortious Interference Claims
Leisure Time argues in its motions for summary judgment on
its tortious interference
of contract claims against Columbia and Academy that they have
acted with "unclean hands" and therefore have tortiously
interfered with Leisure Time's 1986 distribution agreement
with Tri-Star. Leisure Time relies on Precision Mfg. Co. v.
Automotive Maintenance Machinery Co., 324 U.S. 806, 65 S.Ct.
993, 89 L.Ed. 1381 (1945), where the Supreme Court denied
equitable relief to a plaintiff under the "clean hands"
doctrine. Unclean hands, however, is not a cause of action; it
is an equitable defense to equitable claims.
One of the essential elements of a claim for tortious
interference of contract is that the alleged tort-feasor
caused a third party to breach its contract with the
plaintiff. Universal Studios v. Nintendo Co., Ltd.,
797 F.2d 70, 75 (2d Cir7.), cert. denied, 479 U.S. 987, 107 S.Ct. 578,
93 L.Ed.2d 581 (1986); Strobel v. New York Mercantile Exchange,
561 F. Supp. 379, 386 (S.D.N.Y. 1983). Thus, in this case,
Tri-Star would have had to breach its contract with Leisure
Time for Leisure Time to have valid tortious interference of
contract claims against Columbia and Academy. Because Tri-Star
did not breach its contract with Tri-Star, Leisure Time's
claims are deficient as a matter of law. Accordingly, Leisure
Time's motion for summary judgment on its claims for tortious
interference of contract must be denied.
For the reasons stated above, Tri-Star's motion for summary
judgment is granted. Accordingly, Leisure Time's cross-motion
for summary judgment is denied. Leisure Time's motion for
summary judgment on Academy's trademark infringement claim is
denied. Leisure Time's motion for summary judgment on its
claims for tortious interference of contract against Columbia
and Academy is also denied.