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Bourne v. Walt Disney Co.

Citations: 68 F.3d 621; 36 U.S.P.Q. 2d (BNA) 1449; 1995 U.S. App. LEXIS 29708Docket: Nos. 1578, 1579, Dockets 94-7793, 94-7847

Court: Court of Appeals for the Second Circuit; October 18, 1995; Federal Appellate Court

Narrative Opinion Summary

In this case, the plaintiff, operating as Bourne Co., filed a copyright infringement lawsuit against Disney, alleging unauthorized use of musical compositions from 'Snow White and the Seven Dwarfs' and 'Pinocchio' in videocassettes and television commercials. The compositions, originally authored by Disney employees, were assigned to Irving Berlin, Inc., and later to Bourne. A jury found in favor of Disney regarding the videocassette claim but sided with Bourne on the unauthorized use in commercials, awarding $420,000 in damages. Bourne appealed the district court's rulings on the burden of proof and denial of further relief, while Disney cross-appealed an estoppel defense rejection and certain jury instructions. The court affirmed the district court's judgment, emphasizing the contractual interpretation of licenses and the applicability of the first sale doctrine. The court also addressed the scope of licenses and the admission of extrinsic evidence to determine the intention of the parties, ultimately upholding the jury's findings and denying both parties' appeals.

Legal Issues Addressed

Burden of Proof in Licensing Disputes

Application: Bourne bore the burden of proving Disney's usage exceeded the authorized scope of licenses due to the nature of the dispute.

Reasoning: Therefore, the copyright owner (Bourne) must demonstrate that Disney's use of the compositions exceeds the authorized scope of the licenses, making this a contractual question of the agreement's coverage of Disney's activities.

Contract Interpretation and Extrinsic Evidence

Application: The court considered extrinsic evidence to determine the parties' intentions regarding the scope of licenses, notably in the absence of a merger clause.

Reasoning: Under New York law, the absence of a merger clause necessitates evaluating the agreement alongside surrounding circumstances to determine if it was intended to be comprehensive.

Copyright Infringement and Licensing Scope

Application: The court examined whether Disney's use of musical compositions in videocassettes exceeded the scope of its licenses from Bourne.

Reasoning: The burden of persuasion lies with the party alleging a breach in a contract action. Bourne argues that Disney lacks the right to sell or publicly distribute videocassettes containing synchronized Compositions, asserting that two separate grants from Bourne were necessary: one for copying the Compositions and another for selling or distributing the videocassettes.

Estoppel Defense in Copyright Law

Application: Disney's claim of estoppel was not upheld, as the jury found no detrimental reliance on Bourne's conduct.

Reasoning: In Disney's cross-appeal, it argues that the district court should have granted judgment on its estoppel defense. However, a reasonable jury could find that Disney did not suffer detrimental reliance on Bourne's conduct, particularly as Disney continued to license the Compositions for television advertisements during the 1970s and mid-1980s.

First Sale Doctrine under Copyright Act of 1909

Application: The court ruled that Disney, licensed by Bourne to exploit the Compositions in its films, could dispose of lawfully made copies under the first sale doctrine.

Reasoning: The court disagrees, stating that Disney, licensed by Bourne to exploit the Compositions in its films, should be allowed to dispose of the lawfully made copies as it sees fit.