Boosey & Hawkes Music Publishers, LTD. v. Walt Disney Co., 145 F.3d 481 (1998) p.325

SUBJECT

licensing

FACTS

Stravinsky licensed the Rite of Spring for a movie. Later P brought this suit alleging that the Disney Company's foreign distribution in video cassette and laser disc of the film Fantasia, featuring Stravinsky's work, infringed Booesy's rights. Assignee of rights to musical composition brought action against licensee who had incorporated composition into motion picture.

PROCEDURE

The United States District Court for the Southern District of New York, Kevin Thomas Duffy, J., 934 F.Supp. 119, ruled that license did not authorize distribution on videotapes or laser discs directly to consumers, dismissed Lanham Act and contract claims and dismissed remaining claims for infringement of foreign copyrights by reason of forum non conveniens. Both parties appealed.

ISSUE

Whether the motion picture license covers video format. When looking at technologies in the future, should you prefer to interpret it in the favor of the grantor, and say that if you want to reserve anything, you make it precisely clear as to what the other guy gets, or do you put the burden over on the grantee, licensee, that if they want anything further they msut expressly state it.

RULE

HOLDING

The Court of Appeals, Leval, Circuit Judge, held that:
(1) music licensing agreement authorized distribution of the motion picture in video format;
(2) evidence raised genuine issue of material fact as to whether licensee knew that agreement permitted use of composition only in motion picture theaters licensed by performing rights licensing organization, precluding summary judgment;
(3) doctrine of forum non conveniens did not warrant dismissal of foreign copyright infringement claims;
(4) fact issues precluded summary judgement on breach of contract claims; and
(5) licensee did not violate Lanham Act's false advertising provision.
Affirmed in part and reversed in part.

RATIONAL

POLICY/NOTES

The ASCAP clause is a condition precedent to you being able to reproduce and distribut this music in any way you want. When drafting a contract, make sure you ask the person with the copyright whether they want to keep copyright for future developed technologies. If you allege it as copyright infringement, you have to go into federal courts (federal question; federal has exclusive jurisdiction). If you allege as a breach of contract, then it woul dbe brought under state court. It is better to be in federal court - so file the copyright infringment claim under title 17, the second cause of action, take pendant jurisdiction under breach of contract. This way you will be in federal court.