Lugosi v. Universal Pictures

MOSK, J.

With the majority of my colleagues I concur in the judgment, and in the opinion of Presiding Justice Roth. Because this is a matter of first impression in our court, I am impelled to add some observations.

Factually and legally this is a remarkable case. Factually: not unlike the horror films that brought him fame, Bela Lugosi rises from the grave 20 years after death to haunt his former employer. Legally: his vehicle is a strained adaptation of a common law cause of action heretofore unknown either in a statute or case law in California.

The plaintiffs, and my dissenting colleagues, erroneously define the fundamental issue, and consistently repeat their misconception. We are not troubled by the nature of Lugosi’s right to control the commercial exploitation of his likeness. That right has long been established. (Haelen Laboratories v. Topps Chewing Gum (2d Cir. 1953) 202 F.2d 866, 868 ; Cepeda v. Swift and Company (8th Cir. 1969) 415 F.2d 1205, *825 1206 ; Uhlaender v. Henricksen (D.Minn. 1970) 316 F.Supp. 1277, 1282 .) The issue here is the right of Lugosi’s successors to control the commercialization of a likeness of a dramatic character—i.e., Count Dracula—created by a novelist and portrayed for compensation by Lugosi in a film version produced by a motion picture company under license from the successor of the novelist. The error in discerning the problem pervades the trial court’s conclusion. Inevitably one who asks the wrong question gets the wrong answer.

Bela Lugosi was a talented actor. But he was an actor, a practitioner of the thespian arts; he was not a playwright, an innovator, a creator or an entrepreneur. As an actor he memorized lines and portrayed roles written for him, albeit with consummate skill. In this instance the part he played was that of Count Dracula, a legendary character out of the novel originated by Bram Stoker, 1 first published in England in 1897, and adapted for the screen by writers employed by Universal Pictures. Due to copyright omission, at all times involved herein the novel and its characters had been in the American public domain.

Merely playing a role under the foregoing circumstances creates no inheritable property right in an actor, absent a contract so providing. Indeed, as the record discloses, many other actors have portrayed the same role, notably Lon Chaney and John Carradine; the first movie was a European version released in 1922 with Max Schreck as the Count. Thus neither Lugosi during his lifetime nor his estate thereafter owned the exclusive right to exploit Count Dracula any more than Gregory Peck possesses or his heirs could possess common law exclusivity to General MacArthur, George C. Scott to General Patton, James Whit-more to Will Rogers and Harry Truman, or Charlton Heston to Moses.

I do not suggest that an actor can never retain a proprietary interest in a characterization. An original creation of a fictional figure played exclusively by its creator may well be protectible. (Goldstein v. California (1973) 412 U.S. 546 [ 37 L.Ed.2d 163 , 93 S.Ct. 2303 ].) Thus Groucho Marx just being Groucho Marx, with his moustache, cigar, slouch and leer, cannot be exploited by others. Red Skelton’s variety of self-devised roles would appear to be protectible, as would the unique *826 personal creations of Abbott and Costello, Laurel and Hardy and others of that genre. Indeed the court in a case brought by the heirs of Stanley Laurel and Oliver Hardy (Price v. Hal Roach Studios, Inc. (S.D.N.Y. 1975) 400 F.Supp. 836 ) observed at page 845: “we deal here with actors portraying themselves and developing their own characters.... ”

Here it is clear that Bela Lugosi did not portray himself and did not create Dracula, he merely acted out a popular role that had been garnished with the patina of age, as had innumerable other thespians over the decades. His performance gave him no more claim on Dracula than that of countless actors on Hamlet who have portrayed the Dane in a unique manner.

Unquestionably an inheritable property right can be either created or eliminated by contract. There was an employment contract here giving Universal the right to exploit “any and all of the artist’s acts, poses, plays and appearances.” Whether the contractual right was intended to be limited to exploitation of the presentation of the photoplay is disputed by the parties. To resolve that conflict and ambiguities in the contract we should turn either to expert testimony concerning custom of the industry—none was admitted here:—or to the law. Fortunately the Legislature has given us guidance.

In the absence of precise provisions of a contract to the contrary, Labor Code section 2860 (formerly Civ. Code, § 1985) must be read into every employment relationship. The statute provides: “Everything which an employee acquires by virtue of his employment, except the compensation which is due to him from his employer, belongs to the employer, whether acquired lawfully or unlawfully, or during or after the expiration of the term of his employment.”

The foregoing principle has been universally accepted. In Zahler v. Columbia Pictures Corp. (1960) 180 Cal.App.2d 582 [ 4 Cal.Rptr. 612 ], the heirs of a musical composer sued for damages when music written under contract to a film studio as a motion picture background was subsequently transferred to and used by a television station. Said the court at page 589: “where an employee creates something as part of his duties under his employment, the thing created is the property of his employer....” Similarly in Treu v. Garrett Corp. (1968) 264 Cal.App.2d 432, 436 [ 70 Cal.Rptr. 284 ], an invention created by an employee was held to belong to the employer because that was the very reason he “was hired and paid.”

*827 By parity of reasoning, Lugosi, the employee, was hired and paid —handsomely, circa 1931—by Universal, the employer, to create a version of Count Dracula in a motion picture. The product of that employment and all the residuals flowing therefrom belong, under the legislative enactment, to the employer. Had the employee desired to withhold any effects of the employment from exploitation by the employer, he could have so provided in the agreement. There is no exclusion in the instant employment contract.

To the same effect is Famous Players-Lasky Corp. v. Ewing (1920) 49 Cal.App. 676 [ 194 P. 65 ]. There an electrical device was conceived by the motion picture studio employer, but the originality and unique skill in inventing the actual lights was that of the employee-electrician. The court held that despite the manual dexterity and creative skill of the employee, the product belonged to the employer. Again the analogy is clear to the instant case: Universal as employer conceived the use of Dracula as a motion picture and acquired the rights thereto from the successor of the author; Lugosi as employee was hired to and did apply his creative skill to performing in the film. As in Famous PlayersLasky, the product and all the rights flowing therefrom belong to the employer.

Finally, I must comment briefly on the problems my dissenting colleagues face when they attempt to determine the temporal limitations of their version of the right of publicity. May the descendants of George Washington sue the Secretary of the Treasury for placing his likeness on the dollar bill? May the descendants of Abraham Lincoln obtain damages for the commercial exploitation of his name and likeness by the Lincoln National Life Insurance Company or the Lincoln division of the Ford Motor Company? May the descendants of James and Dolly Madison recover for the commercialization of Dolly Madison confections?

Although conceding it is inherently a policy decision, and without statutory guidance or case authority, the dissent by mere ipse dixit selects the copyright period, i.e., the author’s life plus 50 years.

I suggest that if the copyright statute can be adapted to an artistic or literary creation where there is no actual recorded American copyright, then all rights to exploitation of Dracula would have been vested not in Lugosi and his heirs but in the author, Bram Stoker. Parenthically, Stoker retained a copyright protection abroad, and his book did not fall *828 into the public domain in England and in countries adhering to the Berne Convention until April of 1962. This was, of course, long after Lugosi’s performances for Universal. While Universal protected itself by contracting in 1930 with Florence Stoker, Bram Stoker’s successor, and with the playwrights who adapted the Broadway theatrical version of Dracula, if Lugosi had attempted to exploit Dracula in 1948, 1931, or 1936, he would have been liable in damages to the Stoker estate. The heirs should have no greater rights now than Lugosi would have had in his lifetime.

A salutary tendency today is to encourage the free dissemination of ideas—political, literary, artistic—even by commercial sources. (See, e.g., Sears, Roebuck & Co. v. Stiffel Co. (1964) 376 U.S. 225, 231 [ 11 L.Ed.2d 661, 666-667 , 84 S.Ct. 784 ].) If Bela Lugosi were alive today, he would be unable to claim an invasion of his right to privacy for Universal’s exploitation not of Lugosi qua Lugosi but of products created in the image of Count Dracula, a role Lugosi played. On a right of privacy theory his successors concededly would be denied the substantial rewards they neither earned nor otherwise deserved two decades after Lugosi’s death. To approve such a bonanza on a newly created cause of action, heretofore unknown in California, ill serves the principles of free expression and free enterprise.

I agree with the Court of Appeal that we must reverse the judgment.

There has long been a debate in literary circles as to whether Dracula is wholly fictional or the prototype of an actual nobleman who once lived in Rumania, in the Transylvanian Alps. In travel literature the government of Rumania—motivated, one suspects, by the potential rewards of tourism—identifies a specific Carpathian castle as the ancestral home of the Count.