Page:Bourne v. Walt Disney (2d Cir. 1995).pdf/5

 compositions contained in 18 additional Mickey Mouse and Silly Symphony cartoons. In 1936, the scope of the 1933 agreement again was expanded, this time to include the musical compositions contained in a series of cartoons to be distributed under an agreement with RKO Radio Pictures, Inc. The 1936 agreement was supplemented by a letter agreement in 1939 to include the “music and compositions contained in [Disney’s] short subject motion pictures for the … 1937–38 and 1938–39” seasons.


 * b. Snow White and the 1937 Assignment Agreement

Disney’s first feature-length film, Snow White, was exhibited in theaters beginning in December of 1937. Sometime before the movie’s premiere, Disney assigned to Berlin the copyrights to eight musical compositions from Snow White. Pursuant to this agreement (“the 1937 Assignment Agreement”), Berlin agreed to pay Disney a share of the royalties that it received from licensees of these compositions. The printed-form agreement used to memorialize the copyright assignment did not reserve any rights to Disney, nor did it grant Disney a license to use the musical compositions in any manner. Notwithstanding this lack of an express license, Snow White was released in theaters on a number of occasions while the principals to the transaction still were alive, without complaint from Berlin or its successor, Bourne.


 * c. The 1939 Pinocchio Agreement

On August 15, 1939, Disney entered into a new and separate agreement with Berlin (“the 1939 Pinocchio Agreement”), assigning to Berlin the copyrights in (1) the compositions from Disney’s full-length motion picture, Pinocchio, and (2) the short subjects comprising Disney’s 1939–40 series, in exchange for certain royalties. This agreement specifically granted back to Disney "the non-exclusive right to mechanically and/or electrically record the said musical compositions … in synchronism with any and all of the motion pictures which may be made by [Disney] and the right to export such recordings to all of the countries of the world, and the right to give public performances of such recordings in connection with the exhibition of the motion pictures with which said recordings were synchronized."

The parties agree that this agreement is fully integrated and is not dependent on any prior agreements.


 * d. The 1961 Settlement Agreement

In 1957, following the death of Saul Bourne, who was the owner of Bourne, Inc., Disney sued to recapture the copyrights in the Compositions, alleging that the copyrights were held in trust by Bourne on the condition that they would be assigned back to Disney upon demand. In its complaint, Disney described the 1933 Agreement as “relating to the music in certain short motion picture subjects;” the 1937 Assignment Agreement as the only agreement concerning Snow White; and the 1939 Pinocchio Agreement as the only contract concerning Pinocchio. The litigation was settled in 1961 by mutual agreement (“the 1961 Settlement Agreement”). Although the 1961 Settlement Agreement granted Disney a license in the theatrical motion picture and television grand performing rights in the Compositions, as defined by the American Society of Composers, Authors, and Publishers, nothing in the settlement agreement gave Disney the right to synchronize or fix the Compositions on videocassette.

2. Disney’s Use of the Compositions


 * a. In General

At trial, Disney introduced substantial evidence that it had used the Compositions for decades in a variety of ways, without complaint from Bourne. As noted above, Snow White was released in 1937 and re-released seven times thereafter. In connection with the re-releases of both Pinocchio and Snow White, Disney created theatrical trailers, using the Compositions, which were run as “coming attractions” in movie theaters. Disney also used the Compositions in connection with its weekly television show that began in 1954 and ran for almost four decades. In particular, the song “When You Wish Upon a Star” from Pinocchio was used as the