And The Lawsuit Goes To . . . An Oscar-Time Guide To 'Best Picture' Intellectual Property Litigation

The film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves, and so on. Sometimes the lawsuits are just as worthy of attention as the films themselves but, until they start giving Most Litigated Picture award (which would almost certainly go either to Gone with the Wind or Titanic), you'll have to make do with our comprehensive guide to intellectual property disputes (well, the published opinions, at least) involving past Best Picture Oscar winners. Enjoy!

Cimarron (1931)

The plaintiff in Caruthers v. RKO Radio Pictures, Inc., 20 F.Supp. 906 (S.D.N.Y. 1937) alleged that the film Cimarron , which was based on the Edna Ferber novel of the same name, was copied from his unpublished manuscript, The Sooners. The Court found that, other than the setting (the settlement of Oklahoma) and well-known frontier scenes a faire, there were no similarities between the works, with one exception: a character who, while fanning flies away from a dinner table, becomes distracted and either falls into a cake (Cimarron) or strikes one of the diners with the fan (The Sooners). The Court held that this fleeting incident had no functional relationship to the story, and could not serve as the basis for a copyright infringement action.

The Great Ziegfeld (1936)

The estate of Florenz Ziegfeld brought a trademark suit to enjoin screenings of The Great Ziegfeld, a biopic of the late Broadway impresario. The estate alleged that the use of the "Ziegfeld" name by the film misappropriated the good will that the estate had inherited from Ziegfeld, and amounted to unfair competition under New York law. But the court in Coffey v. MGM Corp., 160 Misc. 186 (N.Y. Misc. 1936) disagreed. Since the "Ziegfeld" business no longer existed to make use of the goodwill (the show did not go on after his death), and goodwill of a strictly personal nature could not be conveyed posthumously, the Court refused to enjoin the screenings.

Gone with the Wind (1939)

Gone with the Wind film producer David O. Selznick was unable to convince Gone with the Wind author Margaret Mitchell to authorize a sequel during her life. After Mitchell's death, MGM claimed that a subsequent agreement with Mitchell's estate granted it the right to create such a sequel. However, in Trust Co. Bank v. MGM, 772 F.2d 740 (11th Cir. 1985), the Eleventh Circuit affirmed that no such right had been granted.

MGM wasn't the only one that couldn't get enough of the film and its success. In 1979, an Atlanta theatre announced the opening of Scarlett Fever, an unauthorized musical play based on the film. MGM filed a copyright infringement action to enjoin the production. In MGM v. Showcase Atlanta Coop. Prods., Inc., 479 F.Supp. 351 (N.D. Ga. 1979), the Court found that the works were substantially similar in terms characters, setting, plot and in many cases had identical dialogue. The Court rejected the defendant's argument that Scarlett Fever was a protected parody of Gone with the Wind. The Court held that, although the play was presented in a humorous "cabaret" style and contained a few instances of arguable parody, it was predominately not a critical commentary but a derivative homage to the original. In other words, the play simply copied way too much from the film. The Court enjoined the production and later granted summary judgment for the plaintiffs.

The Wind Done Gone, on the other hand, was a parody. Alice Randall's book retold the story of Gone with the Wind from the perspective of one of Scarlett O'Hara's slaves, and intentionally borrowed characters and plot elements from the original in order to critique its romantic depiction of the Civil War-era American South. Mitchell's estate brought suit and the District Court granted a preliminary junction against distribution of Randall's book but, in SunTrust Bank v. Houghton Mifflin Co., 268 F. 3d 1257 (11th Cir. 2001), the Eleventh Circuit vacated the injunction as an unlawful prior restraint of speech and held that The Wind Done Gone was fair use.

Gone with the Wind merchandise has also been the subject of numerous trademark and copyright disputes, as we have previously reported here.

Casablanca (1943)

In 1941, Murray Burnett and Joan Allison wrote a play called Everybody Comes to Rick's, the rights in which they assigned to Warner Brothers before the play was ever staged. The studio turned the play into Casablanca , one of the most iconic films of all time. In 1983, Warner Brothers produced a television "prequel"...