579 F.2d 215 (2d Cir. 1978)
Colonel Tom Parker began serving as Elvis Presley's manager in 1956 and directed the marketing of merchandise bearing the Elvis name and likeness through Boxcar Enterprises, Inc., a Tennessee corporation controlled by Presley and Parker.1 Boxcar sublicensed other companies to manufacture and distribute specific items while receiving royalties from the sales.2
Elvis Presley died suddenly on August 16, 1977. Two days later, Boxcar granted Factors Etc., Inc. the exclusive license to exploit commercially the name and likeness of Elvis Presley for an initial payment of $100,000 against a guarantee of $150,000.3 Vernon Presley, as executor of the estate, signed the agreement and warranted that Boxcar was the sole owner of the commercial rights, and the agreement received Parker's approval.4
Three days after Presley's death, Pro Arts, Inc. purchased the copyright in a photograph of Presley from a staff photographer of the Atlanta Journal and published a poster entitled "IN MEMORY" bearing the dates "1935-1977."5 Pro Arts began marketing the poster on the day of publication, with one of its first customers being Stop and Shop Companies, Inc., which sold the poster through its Bradlees Stores Division in the Southern District of New York.6
On August 24, 1977, Pro Arts notified Boxcar that it was offering a memorial Elvis poster. Factors asserted its exclusive rights and warned Pro Arts of a potential lawsuit.7 Pro Arts filed a declaratory judgment action in the Northern District of Ohio, after which Factors instituted this action in the Southern District of New York on September 26, 1977.8
The district court granted a preliminary injunction on October 13, 1977, restraining Pro Arts from manufacturing, selling, or distributing the poster or utilizing Presley's name or likeness for commercial profit.9 Pro Arts appealed the order to the Second Circuit under 28 U.S.C. § 1292(a)(1).10
Whether the district court abused its discretion in denying Pro Arts' motion to transfer the action to the Northern District of Ohio or to stay the proceedings pending resolution of the Ohio action?11
Under 28 U.S.C. § 1404(a), the burden is on the moving party to establish that there should be a change of forum.12 When a party seeks the transfer on account of the convenience of witnesses under § 1404(a), he must clearly specify the key witnesses to be called.13 He must make a general statement of what their testimony will cover. The first suit should have priority.14 This is absent the showing of balance of convenience in favor of the second action or unless there are special circumstances which justify giving priority to the second.15 The test is wise judicial administration.16 It gives regard to conservation of judicial resources and comprehensive disposition of litigation.17
No. There can be no doubt that the burden is on the defendant, when it is the moving party, to establish that there should be a change of forum.18 Not only was no such demonstration attempted, but Pro Arts did not even urge the convenience of witnesses and parties below as a ground for § 1404(a) transfer.19 Because the issue was not raised in the district court and supported by affidavits, there could be no abuse of discretion in not granting transfer on these grounds.20
The rule in this circuit is that the first suit should have priority. This is absent the showing of balance of convenience in favor of the second action or unless there are special circumstances which justify giving priority to the second. Pro Arts' suit for declaratory judgment was filed in apparent anticipation of Factors' New York suit.21 When the declaratory judgment action has been triggered by a notice letter, this equitable consideration may be a factor in the decision to allow the later filed action to proceed to judgment in the plaintiffs' chosen forum.22
At the time that this case was filed, two additional lawsuits against other defendants by Factors presenting the identical issue for resolution were pending in the Southern District of New York.23 Efficient and responsible judicial administration dictated that these three cases be tried before the same forum.24
The district court did not abuse its discretion in denying Pro Arts' motion to transfer the action to the Northern District of Ohio or to stay the proceedings pending resolution of the Ohio action.25
Whether the exclusive right to exploit commercially a celebrity's name and likeness survives the celebrity's death?26
The right of publicity is a transferable property right independent from the statutory right of privacy.27 A man has a right in the publicity value of his photograph. This is the right to grant the exclusive privilege of publishing his picture. Such a grant may validly be made in gross. This is without an accompanying transfer of a business or of anything else.28 When the right is exercised during the celebrity's life by assigning the exclusive authority to exploit the image through a controlled corporation, the right survives the celebrity's death.29 The income interest should inure to the estate at death like any other intangible property right.30
Yes. Elvis Presley assigned to Boxcar Enterprises the exclusive authority to print, publish and distribute his name and likeness during his lifetime through the series of contracts beginning in 1956 and extended through 1976.31 Boxcar, the vehicle through which the commercial Elvis Presley rights were marketed, then granted Factors Etc., Inc. the exclusive license to exploit commercially the name and likeness of Elvis Presley two days after death for $100,000 against a guarantee of $150,000, with Vernon Presley warranting Boxcar's sole ownership.32
The identification of this exclusive right belonging to Boxcar as a transferable property right compels the conclusion that the right survives Presley's death.33 The death of Presley, who was merely the beneficiary of an income interest in Boxcar's exclusive right, should not in itself extinguish Boxcar's property right.34 Instead, the income interest, continually produced from Boxcar's exclusive right of commercial exploitation, should inure to Presley's estate at death like any other intangible property right.35
To hold that the right did not survive Presley's death would be to grant competitors of Factors, such as Pro Arts, a windfall in the form of profits from the use of Presley's name and likeness.36 At the same time, the exclusive right purchased by Factors and the financial benefits accruing to the celebrity's heirs would be rendered virtually worthless.37
The exclusive right to exploit commercially a celebrity's name and likeness survives the celebrity's death when exercised during the celebrity's lifetime.38
Whether publication of a memorial poster depicting a deceased celebrity is privileged as the publication of a newsworthy event?39
A poster is not privileged as celebrating a newsworthy event merely because it bears a legend such as IN MEMORY and the dates of the celebrity's life.40 This is distinguishable from a poster picturing a political candidate in satire.41 Such a poster may be considered newsworthy in the First Amendment sense.42 The interest protected by the right of publicity is closely analogous to the goals of patent and copyright law.43 It focuses on the right of the individual to reap the reward of his endeavors.44 No social purpose is served by having the defendant get free some aspect of the plaintiff that would have market value and for which he would normally pay.45
No. Three days after Presley's death, Pro Arts purchased the copyright in a photograph of Presley from a staff photographer of the Atlanta Journal and published a poster entitled IN MEMORY bearing the dates 1935-1977.46 Pro Arts began marketing the poster on the day of publication, with one of its first customers being Stop and Shop Companies, Inc., which sold the poster through its Bradlees Stores Division in the Southern District of New York.
We cannot accept Pro Arts' contention that the legend IN MEMORY placed its poster in the same category as one picturing a presidential candidate, albeit a mock candidate.47 The poster was offered to meet the public demand for Elvis Presley memorabilia and constituted commercial exploitation rather than protected speech on a newsworthy event.48
The rationale for the right of publicity is one of preventing unjust enrichment by the theft of good will.49 Pro Arts' publication of the memorial poster was therefore not privileged.50
Publication of the memorial poster depicting the deceased celebrity was not privileged as the publication of a newsworthy event.51