Rogers v. Republic Productions, Inc. (104 F. Supp. 328, 1952)

HALL, District Judge.

Findings of Fact

(1) The plaintiff Roy Rogers was at the time of the commencement of the within action and now is a citizen and resident of the County of Los Angeles, State of California.

(2) The defendant Republic Productions, Inc. was at the time of the commencement of the within action and now is a corporation duly organized and existing under the laws of the State of New York and is a citizen of said State. The defendant Hollywood Television Service, Inc. was at the time of the commencement of the within action and now is a corporation duly organized and existing under the laws of the State of Delaware and is a citizen of said State. Said defendant Hollywood Television Service, Inc. was organized on or about November, 19S0, for the express purpose of selling, leasing, or otherwise distributing through the medium of television, certain of the motion pictures formerly produced by the defendant Republic Productions, Inc. The defendant Republic Pictures Corporation was at the time of the commencement of the within action and now is a corporation duly organized and existing under the laws of the State of New York and is a citizen of said State. The defendants Republic Productions, Inc. and Hollywood Television Service, Inc. were at the time of the commencement of the within action and now are each wholly owned subsidiaries of defendant Republic Pictures Corporation. The rights of defendants Republic Pictures Corporation and Hollywood Television Service, Inc., and each of them, insofar as the subject matter of this action is concerned, are no greater than and are subject to at least the same limitations as the rights of defendant Republic Productions, Inc.

(3) The within action is a civil action wherein the matter in controversy exceeds the sum or value of Three Thousand Dol lars ($3,000.00) exclusive of interest and costs.

(4) Plaintiff adopted the name “Roy Rogers” for all professional purposes in early 1938 and has at all times since said date been known professionally as Roy Rogers. By change of name proceedings plaintiff caused his name to be formally and legally changed to “Roy Rogers” in 1942. As against the defendants in this action and each of them and anyone claiming through or under them, or any of them, the plaintiff is the sole and exclusive owner of his name “Roy Rogers” and his voice and likeness and of the name and likeness of his horse “Trigger” for any and all commercial advertising purposes whatsoever, as said term “commercial advertising purpose” is defined in Finding No. 13.

(5) Plaintiff has been for many years and now is an internationally known motion picture, stage, radio and rodeo star and has achieved and maintained for many years and now has a great and widespread fame and prominence as an actor, singer, rodeo performer, horseman and personality. Plaintiff has been for many years and now is well known and identified in the public mind throughout the United States and many foreign countries as “Roy Rogers”. Plaintiff’s fame as a western star has been and now is such that at all times since 1942 he has also been and now is well known and identified in the public mind as “King of the Cowboys”.

(6) On or about October 13, 1937, the plaintiff Roy Rogers whose true name was then Leonard Slye, entered into a written Agreement with the defendant Republic Productions, Inc. Said Agreement was and is in printed form, except for a few typewritten words and figures, and was prepared by counsel for the defendants Republic Productions, Inc. and Republic Pictures Corporation. At and before the time of the signing of said Agreement the plaintiff was not represented by any attorney or agent acting for or on behalf of plaintiff. A full, true and correct copy of said Agreement was offered and received in evidence as plaintiff’s Exhibit No. 17 and is attached hereto marked Exhibit A and made a part hereof, and for convenience and brevity will hereinafter in these Findings sometimes be referred to as the “1937 Agreement”. By various letter agreements, which the Court finds to be immaterial to the dispute herein involved, the term of the 1937 Agreement was extended to on or about February 28, 1948.

(7) During the term of the 1937 Agreement the defendant Republic Productions, Inc. produced a total of sixty-three (63) motion pictures in each of which the plaintiff Roy Rogers was starred in the leading male role. A true and correct list of the titles of said motion pictures and the dates of completion of photography thereof is set forth in Exhibit B which is attached hereto and made a part hereof.

(8) On or about March 9, 1948, the plaintiff Roy Rogers entered into a written Agreement with the defendant Republic Productions, Inc. A full, true and correct copy of said Agreement which bears the date of February 28, 1948, was offered and received in evidence as plaintiff’s Exhibit No. 20 and is attached hereto marked Ex-Mbit C and made a part hereof, and for convenience and brevity will hereinafter in these Findings sometimes be referred to as the “1948 Agreement”. The term of said 1948 Agreement commenced on March 1, 1948, and ended on or about May 27, 1951.

(9) During the term of the 1948 Agreement the defendant Republic Productions, Inc. produced a total of eighteen (18) motion pictures in each of which the plaintiff Roy Rogers was starred in the leading •male role. A true and correct list of the titles of said motion pictures and the dates of completion of photography thereof is set forth in Exhibit D which is attached hereto and .made a part hereof.

(10) During the period of time covered by the terms of the 1937 Agreement and the 1948 Agreement or one of them, in addition to the eighty-one (81) motion pictures in which the plaintiff was starred (listed in Exhibits B and D hereto), the defendant Republic Productions, Inc. .produced four (4) feature length motion pictures entitled respectively, “Dark Command”, “Lake Placid Serenade”, “Brazil” and “Hit Parade of 1947”, in each of which the plaintiff appeared incidentally but did not star and during the term of the 1937 Agreement the plaintiff appeared in two (2) additional feature length motion pictures entitled respectively “Hollywood Canteen” and “Melody Time”, which two motion pictures were produced by motion picture producers (not parties to this suit) pursuant to the “loan-out” provisions of the 1937 Agreement.

(11) During the period 1938 to 1951, both inclusive, plaintiff has, with the knowledge and encouragement of defendants Republic Productions, Inc. and Republic Pictures Corporation, made substantially' in excess of 640 personal appearances, more than 563 rodeo appearances and substantially in excess of 242 radio appearances. Said .defendants and plaintiff have from time to time each expended large sums of money in publicizing plaintiff in connection with some of said' appearances. Through the 'expenditure of said sums of money, but primarily through.and because.of his own personality, industriousness, ability, performance, and exemplary personal conduct and private life, .plaintiff has built up and maintained over a period of many years, and he now enjoys in the mind of the public, a great and widespread popularity, trust, good will, confidence and esteem for himself personally and for his name “Roy Rogers”.

(12) For more than thirteen (13) years plaintiff has continuously used a horse named “Trigger” in his various professional appearances, as well as certain “doubles” for said horse which doubles have also been known as “Trigger”; and the said name and horse “Trigger” has been during said entire period and now is associated in the public mind exclusively with the plaintiff Roy Rogers. For many years the said Trigger and said doubles have been and they now are owned, maintained and trained by the plaintiff at his own sole cost and expense. The rights of the respective parties to the within action, as herein determined, apply equally both to Roy Rogers and to Trigger, and 'hereinafter in these Findings, for convenience and brevity, all references to the use of, or the rights or obligations of the parties hereto with respect to the use of, the name, voice and likeness (or any thereof) of plaintiff shall also be deemed to include and apply equally to the name and likeness (or either thereof) of plaintiff's horse Trigger.

(13) The term “advertising, commercial and/or publicity purposes” as used in the fourth sentence af paragraph 4 of the 1937 Agreement and the terms “commercial advertising” and “commercial tie-up” as used in subparagraph (B) of paragraph 4 of the 1948 Agreement were intended by the parties to be and they are synonymous with the term' “commercial tie-ups for products of every kind or character (other than motion pictures)” as used in subparagraph (C) of paragraph 4 of said 1948 Agreement. Said terms were each intended to mean, and throughout the terms of the said 1937 Agreement and the said 1948 Agreement (until on or about February 1, 1950) were construed by the parties by their acts and conduct to mean, and they do mean any use whatsoever of the name, voice or likeness of the plaintiff Roy Rog•ers (whether in still photographs or in motion pictures or otherwise or at all, and whether used as a trade name or as an endorsement, either direct or implied, or as a so-called “attention-getter” .or otherwise or at all, and whether used on or in radio, television, newspapers, magazines, bill-hoards, car cards or any other advertising medium or media whatsoever) in association with or to advertise or otherwise promote any service or product whatsoever except only (a) the defendant Republic Productions, Inc. as a producer of motion pictures and/or (b) any of the motion pictures produced by said defendant under •either the 1937 Agreement or the 1948 Agreement. For convenience and brevity said terms and the meaning thereof, as in this Finding defined and limited, shall hereinafter (in these Findings and Conclusions •and in the Judgment to be entered herein) "be referred to as “commercial advertising” •or “'Commercial advertising purpose” ; provided however, that for the reasons set forth in Findings Nos. 39 and 41, said terms “commercial advertising” and “commercial advertising purpose” as used in these Findings and Conclusions and in the Judgment to be entered herein, do not include the use as feature length motion pictures of any of the following four (4) feature length motion pictures produced "by defendant Republic Productions, Inc. •and in which the plaintiff incidentally appeared but did not star: “Dark Command”, “Lake Placid Serenade”, “Brazil” and “Hit Parade of 1947”, and likewise do not include the use of any of the eighty-one (81) feature length motion -pictures listed in Exhibits B and D hereto in theaters or any •other place where an admission fee is or 'has been customarily charged for the entertainment or for admission to the entertainment (either in the customary manner by a projector in such place or by means of a television transmission or projection onto a screen or screens in such place) or on television screens where a fee is charged to the viewers of such screens for the privilege of viewing such motion pictures, even though some incidental advertising may also be shown on the screens in said theaters or other places or on said television screens.

(14) In 1938 the plaintiff Roy Rogers commenced a business based upon the use of his name, voice and likeness for commercial advertising purposes. In the development and maintenance of plaintiff’s said commercial advertising business the plaintiff has at all times exercised great care, diligence and discretion in determining the number, type, character and quality of the products and services with which he has permitted his name, voice or likeness to be associated, and at no time has plaintiff recommended, approved or endorsed, either directly or impliedly, or permitted his name, voice or likeness to be associated with or used in connection with, any products or services except those which the plaintiff, in good faith, believed to be of good quality, suitable for safe purchase and use by the public, and of a character consistent with his widespread reputation as a wholesome cowboy of high moral character.

(15) At all times since early 1938, the plaintiff has, with the knowledge, encouragement and consent of the defendants Republic Productions, Inc. and Republic Pictures Corporation, asserted and exercised exclusive control over, and the exclusive right to receive and retain and plaintiff has received and retained any and all monetary consideration from the use of his name, voice or likeness for commercial advertising purposes.

(16) At all times since 1938, whenever anyone, including but not limited to the defendants Republic Productions, Inc. and Republic Pictures Corporation, has ever desired to use or authorize others to use plaintiff’s name, voice or likeness for any commercial advertising purpose, all of said persons, including said defendants, have always first requested the consent of plaintiff before making such use, and plaintiff has always controlled the granting of such consents; provided however that from and after on or about February 1, 1950, the defendants Republic Productions, Inc., Republic Pictures Corporation and Hollywood Television Services, Inc. made the various claims set forth in Findings Nos. 18, 19 and 47 respectively.

(17) Plaintiffs said commercial advertising business has been and now is of very great value and has in each year since 1945 and now is producing for him a substantially greater income than he has received in like periods for rendering services in motion picture work. The great •value of said commercial advertising business, and the great value of plaintiffs name, voice and likeness for commercial advertising purposes, is to a very large extent due to the continuous discretion, care and control which plaintiff has always exercised in determining the extent to which the manner in which and the product or service for or in connection with which his name, voice and likeness have been used for commercial advertising purposes, and the continued value of plaintiff’s said commercial advertising business is directly dependent upon a continuance of such exclusive control by the plaintiff.

(18) On or about June 8, 1951, the defendant, Hollywood Television Service, Inc., with the knowledge, consent and acquiescence of Republic Productions, Inc. and Republic Pictures Corporation, caused to be mailed a letter dated June 8, 1951 (a true and correct copy of which was offered and received in evidence as plaintiff’s Exhibit No. 30) to various advertising agencies and to various television networks and stations and thereby offered (for a valuable consideration to be paid to said defendant) for immediate telecasting certain of the said eighty-one (81) motion pictures listed in Exhibits B and D; and on or about June 19, 1951, and again on June 20, 1951, the defendant Hollywood Television Service, Inc., with the knowledge, consent and acquiescence of defendants, Republic Productions, Inc. and Republic Pictures Corporation, reiterated its offer of said pictures (for a valuable consideration to be paid to said defendant) for immediate 'telecasting and offered to license said motion pictures in groups of thirteen (13), twenty-six (26) or fifty-two (52) and said offers contemplated that the name, voice and likeness of plaintiff Roy Rogers, if the licensees of said motion pictures so desired, be regularly, repetitiously and systematically telecast to the viewing and listening public, free of charge, to such viewing" and listening public, for commercial advertising purposes; and said offers also contemplated the customary, systematic and repetitious use of plaintiff’s name and likeness in newspapers and other advertising media regularly and customarily used, to advertise a licensee’s or sponsor’s program and the services of products advertised thereon. Said offers contemplated that all of said motion pictures would be re-edited and shortened so that they each, would have a running time of approximately fifty-three and one-half (53%) minutes and would therefore be made suitable for use on a one (1) hour television program. The prices quoted by defendant Hollywood Television Services, Inc. were quoted for said motion pictures in. groups of thirteen (13), twenty-six (26) or fifty-two (52) at the rate of $30,000 per picture for one nationwide telecast or $50,-000 per picture for two such telecasts.

(19) Prior to the commencement of the within action, the plaintiff 'formally demanded that the defendants withdraw the written offer of June 8, 1951, and the additional oral offers of June 19, and 20,. 1951, but defendants refused to comply with said demand, and said defendants, then and at all times since have claimed and now claim that they have the absolute and unrestricted right to utilize and authorize others to utilize all or any of the motion pictures produced by defendant Republic Productions, Inc. and in which the plaintiff appeared and any portions or portion thereof, in any manner and for any purpose or purposes whatsoever.

(20) The first sentence of paragraph 4 of the 1937 Agreement was intended by the parties thereto to set forth and it does set forth the full extent of the only perpetual right granted by plaintiff to defendant Republic Productions, Inc. to use or authorize others to use plaintiff’s name, voice or likeness (whether in still photographs or in motion pictures or otherwise or at all) in or in connection with the advertising of any service or product whatsoever, and the parties intended said perpetual advertising right to be limited and it was limited solely to the advertising of the defendant Republic Productions, Inc. as a producer of motion pictures and any of the motion pictures produced by Republic Productions, Inc. under said 1937 Agreement.

(21) During the term of the 1937 Agreement, the sole and exclusive right to use plaintiff’s name, voice and likeness for commercial advertising purposes was expressly and intentionally recognized and acknowledged by defendants Republic Pro-ductions, Inc. and Republic Pictures Corporation to be in, and was granted to, the plaintiff in lieu of additional salary and •also in consideration of the substantial and valuable publicity and advertising which ■defendants Republic Productions, Inc. and .Republic Pictures Corporation received from plaintiff in the course of the exercise 'by plaintiff of said commercial advertising rights and as a result of plaintiff’s other ■outside activities such as rodeos and other "types of personal appearances in each and .all of which plaintiff required and secured publicity and advertising for said defendants.

(22) By the 1948 Agreement, the parties thereto intended to and did terminate the 1937 Agreement as of on or about February 28, 1948, and intended to and did as •of said date terminate all rights of defendant Republic Productions, Inc. under said 1937 Agreement except those specifically reserved in the last sentence of paragraph 29 of said 1948 Agreement

(23) By the 1948 Agreement, and especially by the last sentence of paragraph .29 thereof, the parties thereto understood, intended to agree and did agree with respect to all results and proceeds of the plaintiff’s services under the 1937 Agreement (including but not limited to the .-sixty-three (63) motion pictures listed in Exhibit B) that the only right reserved by said defendant to use plaintiff’s name, voice or likeness (whether in still photographs or in motion pictures or otherwise •or at all) for advertising purposes was to be limited, and it was limited, solely to the advertising of the defendant Republic Productions, Inc. as a producer of motion pictures and of any of the motion pictures produced by Republic Productions, Inc. under either the said 1937 Agreement or said 1948 Agreement.

(24) By the 1948 Agreement, the parties thereto intended to and did recognize and acknowledge that the 1937 Agreement did not give Republic Productions, Inc. any perpetual right to use plaintiff’s name, voice or likeness (whether in still photographs or in motion pictures or otherwise or at all) for commercial advertising purposes.

(25) The second sentence of subparagraph (A) of paragraph 4 of the 1948 Agreement was intended by the parties thereto to set forth and it does set' forth the full extent of the only perpetual right granted by plaintiff to defendant Republic Productions, Inc. to use or authorize the use of plaintiff’s name, voice or likeness (whether in still photographs or in motion pictures or otherwise or at all) in or in connection with the advertising of any service or product whatsoever, and the parties intended said perpetual advertising right to be limited and it was limited solely to the advertising of the defendant Republic Productions, Inc. as a producer of motion pictures and of any of the motion pictures produced by Republic Productions, Inc. under either the 1937 Agreement or under said 1948 Agreement.

(26) Subparagraph (B) of paragraph 4 of the 1948 Agreement was intended by the parties thereto to set forth and it does set forth the sole and only right granted by plaintiff to defendant Republic Productions, Inc. to use or authorize others to use plaintiff’s name, voice or likeness for commercial advertising purposes and said subparagraph (B) was intended by the parties to and it does restrict and limit the right of the defendant Republic Productions, Inc. to use or authorize others to use the name, voice or likeness of plaintiff (whether in still photographs or in motion pictures or otherwise or at all) in or in connection with advertising.

(27) The paragraphs numbered “2” in the 1937 and 1948 Agreements, respectively, including but not limited to the definitions of “photoplays” appearing therein, were not intended to be and are not a grant of any rights in any of the motion pictures produced under either of said Agreements or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, and in any event were not intended to and do not grant any advertising rights whatsoever. The words “television” and “television devices” appearing in the said definitions are synonymous and were- not intended to and do not refer to or grant to the defendant Republic Productions, Inc. any right to telecast or broadcast for commercial advertising purposes any of the eighty-one (81) motion pictures (listed in Exhibits B and D hereto) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used on either a “sustaining” basis or a "commercially sponsored” basis as said words “sustaining” and “commercially sponsored” are hereinafter defined in Findings Nos. 29 and 31.

(28) At the respective dates of execution of the 1937 Agreement and the 1948 Agreement, the parties intended the provisions therein in any way relating to “advertising, commercial and/or publicity purposes”, “commercial advertising” and “commercial tie-ups” to be, and by their acts and conduct during the respective terms thereof construed said provisions to be, and said provisions were and are a limitation upon any and all of the provisions in either of said Agreements in any way relating to television productions, or to the broadcasting or transmission of plaintiff’s name, voice or likeness by means of television, radio or otherwise, or to the exhibition or transmission of motion pictures by radio, television or other devices.

(29) A “sustaining” program is a program which is telecast or broadcast under the sponsorship of and at the expense of the station or network presenting the program and where no announcements advertising any product or service (other than the station or network) are made or shown during or directly in connection with such programs, although so-called “station break commercials” may and customarily are made or shown immediately before, during, or immediately following such sustaining programs at the time when the so-called “station break” announcements identifying the station or network are made or shown..

(30) The use of any of the eighty-one (81) motion pictures (listed in Exhibits-B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used on either a sustaining television or sustaining radio program would be primarily for the purposes of advertising the station or network presenting’ such program, of attracting and building up a listening and/or viewing audience for the program and the time period allotted to-the program, and of selling such program, and allotted time to a commercial sponsor or sponsors, and such use would be for commercial advertising purposes.

(31) A “commercially sponsored” program is one which is telecast or broadcast under the sponsorship of and at the expense of one or more sponsors and where announcements advertising the products- or services of such one or more sponsors (other than merely the station or network over which the program is being telecast or broadcast) are made or shown at one or more times during or in connection with the program, and as used in these Findings includes so-called “participating” programs, to-wit programs, the entertainment portions of which are furnished by the station or network and during or in connection with which so-called “spot commercials” advertising products or services of two or more sponsors (other than merely the station or network over which the program is being telecast or broadcast) are made or shown at various times.

(32) The telecasting or broadcasting of any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used,, or of any still photograph of plaintiff or any recording of plaintiff’s voice, on either a sustaining or commercially sponsored basis, or the use of plaintiff’s name, voice or likeness in any other advertising medium or media to advertise any service or product whatsoever (except only Republic Productions, Inc. as a producer of motion pictures and any of the motion pictures produced by Republic Productions, Inc. under either the 1937 Agreement or the 1948 Agreement) would constitute'a use of plain-tiff’s name, voice or likeness for commercial-advertising. purposes.

(33) The telecasting or broadcasting of' any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, or of any still photograph of plaintiff or any recording of plaintiff’s voice, on either a sustaining or commercially sponsored basis, or the use of plaintiff’s name, voice or likeness in any other advertising medium or media, to advertise any service or product whatsoever (except only Republic Productions, Inc. as a producer of motion pictures and any of the motion pictures produced by Republic Productions, Inc. under either the 1937 Agreement or the 1948 Agreement) would constitute a use of plaintiff’s name, voice or likeness in a “commercial tie-up” of the type reserved exclusively to plaintiff by the 1948 Agreement.

(34) The telecasting or broadcasting of any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, or of any still photograph of plaintiff or any recording of plaintiff’s voice, on a commercially sponsored basis, or the use of plaintiff’s name, voice or likeness in any other advertising medium or media to advertise any service or product whatsoever would cause an association in the minds of the viewing and/or listening public between the plaintiff’s name, voice or likeness and the product or service being advertised.

(35) The telecasting or broadcasting of any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, or of any still photograph of plaintiff or any recording of plaintiff’s voice, on a sustaining basis, would cause an association in the minds of the viewing and/or listening pub-lie between the plaintiff’s name," voice or likeness and the station or network presenting the -program.

(36) The telecasting or broadcasting of any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or; any other portion thereof in which the name, voice or likeness of plaintiff appears or is Used, or of any still photograph of plaintiff or any recording of plaintiff’s voice, pn a commercially sponsored basis, or the use of plaintiff’s name, voice or likeness in any other advertising medium or media .to advertise any service or product whatsoever, would create in the minds of the viewing and/or listening public the belief that the plaintiff approved, endorsed or recommended the product or service of such sponsor or other advertiser.

(37) The telecasting or broadcasting of any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any-other portion thereof in which the name, voice or likeness of plaintiff appears or is used, or of any still photograph of plaintiff or any recording of plaintiff’s voice, on a sustaining basis would create in the minds of the viewing and/or listening public the belief that the plaintiff approved, endorsed or recommended the station or network presenting the program.

(38) The principal value to a commercial sponsor or station or network in telecasting or broadcasting any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, would be in the name, reputation and sincerity of the plaintiff; and it would be the primary aim, intent, and hope of any such commercial sponsor or station or network to favorably associate the name and reputation of the plaintiff with the sponsor’s service or product and to indicate to the public either directly or indirectly that the plaintiff approves, recommends or endorses the -said service or product and to trade on the name and good will which the plaintiff has built up over a period of many years and to capture for such sponsor’s service or product as great a portion as possible of the good will which attaches to the name, voice and likeness of Roy Rogers.

(39) The defendants do not have any right whatsoever (under either the 1937 Agreement or the 1948 Agreement or otherwise or at all) to use the name, voice or likeness of plaintiff (whether in still photographs or in motion pictures or otherwise or at all) for commercial advertising purposes; and without in any way limiting the generality of the foregoing, the Court expressly finds that the defendants, and each of them, do not have any right whatsoever (under either the 1937 Agreement or the 1948 Agreement or otherwise or at all) to telecast or broadcast or to authorize others to telecast or broadcast for commercial advertising purposes any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, on either a sustaining or commercially sponsored basis. As to the four (4) motion pictures referred to in Findings No. 10, to wit, “Dark Command”, “Lake Placid Serenade”, “Brazil” and “Hit Parade of 1947”, in each of which the plaintiff appeared incidentally but did not star, the plaintiff in open court waived any right that he otherwise would have had to prevent the showing of said feature length motion pictures for advertising purposes so long as they are shown substantially in their entirety and as feature length motion pictures, but defendants may not use any scene or sound track or any other portion of said four (4) feature length motion pictures in which the name, voice or likeness of plaintiff appears or is used if said scene, sound track, or other portion is used out of context or in any other manner than as an integral part of the said feature length motion pictures. By reason of said waiver, the use of said four (4) feature length motion pictures or any of them as feature length motion pictures, was excluded from the definition of the phrases “commercial advertising” and “commercial advertising purpose” set forth in Finding No. 13.

(40) The 1948 Agreement and in particular the provisions of subparagraph (C) of paragraph 4 thereof, in recognizing and reserving to the plaintiff the exclusive right to enter into commercial tie-ups and to freely exercise such right, gave rise to an implied negative convenant on the part of defendant Republic Productions, Inc. and anyone claiming through or under it, not to use plaintiff’s name, voice or likeness, either in still photographs or in motion pictures cr otherwise or at all for commercial advertising purposes.

(41) Incidental advertising where the viewing and listening audience ¡has paid the customary admission fee or charge for the entertainment or for admission to the entertainment ¡and the effect of such incidental advertising on such audience, are substantially and materially different and are not the same as ¡advertising and the effect thereof where no admission fee or charge is made to the viewing and' listening audience and the entertainment is brought to the viewing and listening audience by an advertiser, station or network without cost to the viewing or listening audience and the parties hereto did not intend to include such incidental advertising and it was not included within the terms “advertising, commercial and/or publicity purposes”, “commercial ¡advertising” and “commercial tie-ups” or any thereof, as such terms were used in either the 1937 Agreement or the 1948 Agreement, for which reasons sitch incidental advertising is excluded from the definition of “commercial advertising” and “commercial ¡advertising purpose” set forth in Finding No. 13.

(42) The purported copyrighting of the motion pictures produced by the defendant Republic Productions, Inc. under either the 1937 Agreement or the 1948 Agreement is immaterial to any issue in this action and in any event did not alter the relationship and the rights and obligations between plaintiff and defendants which are the subject matter of this action, and to the extent that said copyrights purport to include any right hereunder found to exist in plaintiff are held in trust by defendants for the benefit of plaintiff.

(43) The defendant Republic Pictures Corporation and defendant Hollywood Television Service, Inc., and each of them, have at all times had full notice and knowledge of plaintiff’s exclusive right to and control over the use of his name, voice and likeness for commercial advertising purposes and likewise have at all times had full notice and knowledge of the fact that defendant Republic Productions, Inc. had no right, license, authority or consent to use or authorize others to use plaintiff’s name, voice or likeness for commercial advertising purposes.

(44) Upon the termination of the 1948 Agreement on or about May 27, 1951, any and all right, license, authority or consent which any of the defendants may theretofore have had or claimed to have had with respect to the use of plaintiff’s name, voice or likeness (whether in still photographs or in motion pictures or otherwise or at all) for commercial advertising purposes wholly ceased and terminated.

(45) At all times until on or about February 1, 1950, the defendants Republic Productions, Inc. and Republic Pictures Corporation represented to the plaintiff that they considered the television and motion picture industries to be competitive and mutually exclusive and that neither a motion picture artist nor a motion picture producer could serve both the motion picture and television industries; and at all times prior to said date said defendants represented to plaintiff that they had no intention or desire to telecast and would not tefecast any of the motion pictures produced by Republic Productions, Inc. under either the 1937 Agreement or the 1948 Agreement.

(46) It is not true that the defendant Republic Productions, Inc. in the negotiations leading up to the execution of the 1948 Agreement ever requested, or that the plaintiff ever agreed to grant to said defendant, the unqualified right to telecast either the motion pictures theretofore produced under the 1937 Agreement or the additional motion pictures to be produced under the 1948 Agreement. On the contrary, the Court expressly finds from said negotiations, from the provisions of the 1948 Agreement, from the conduct of the parties, and from the parties’ mutual construction and interpretation of the 1937 Agreement and the 1948 Agreement, that the parties to said 1948 Agreement understood, intended and agreed that plaintiff was to have the sole and exclusive right to and the control over the use of his name, voice and likeness for commercial ■advertising purposes, and that said exclusive right and control in plaintiff was not intended to be limited, and was not limited to plaintiff’s name, voice or likeness outside of motion pictures but was intended by the parties to include plaintiff’s name, voice and likeness whether in still photographs or in motion pictures or otherwise or at all.

(47) At no time prior to on or about February 1, 1950, did the defendants, or any of them, ever claim the right to use any of the motion pictures produced by the defendant Republic Productions, Inc. under either the 1937 Agreement or the 1948 Agreement, or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, for any commercial advertising purpose. The first time any such claim was made by any of the defendants was on or about February 1, 1950, at which time the defendant Republic Productions, Inc. did claim such right, and plaintiff thereupon immediately advised said defendant that it had no right to use any of said motion pictures or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, for commercial advertising purposes, and that its rights in said motion pictures were subject and subordinate to plaintiff’s exclusive right to use his name, voice and likeness for commercial advertising purposes. Whenever in these Findings, reference is made to the parties’ mutual construction or mutual interpretation of the 1937 and 1948 Agreements by their acts 'and conduct, such reference shall be understood to mean the acts and conduct of the parties beginning in 1937 and extending continuously throughoút the terms of the 1937 and 1948 Agreements until on or about February 1, 1950:

(48) At all times from about 1938 until on or about February 1, 1950, defendants Republic Productions, Inc. and Republic Pictures Corporation, and each of them, by their acquiescence, representations and conduct represented to, encouraged, led and permitted the plaintiff to believe, and he did believe, that he had the sole and exclusive right to use and authorize others to use his name, voice and likeness (whether in still photographs or in motion pictures or otherwise or at all) for commercial advertising purposes and to receive and retain all monetary consideration therefrom, and said defendants intended that plaintiff should rely upon such acquiescence, representations and conduct, and plaintiff did so rely, and in reliance thereon has heretofore over a long period of years developed a large and valuable commercial advertising business based upon the licensing of his name, voice and likeness for commercial advertising purposes and has expended a great amount of time, effort and money in the development of said business and has entered into or authorized others to enter into numerous valuable contracts with third parties whereby for a consideration, but always subject to the control of plaintiff, said third parties were authorized to use plaintiff’s name, voice or likeness in or in connection with the advertising of the service or product of such licensed persons. As hereinbefore found, the plaintiff was granted and encouraged by defendants to exploit said commercial advertising rights in lieu of additional salary and also in consideration of the substantial and valuable publicity and advertising which defendants Republic Productions, Inc. and Republic Pictures Corporation received from plaintiff in the course of the exercise by plaintiff of said commercial advertising rights and as a result of plaintiff’s other outside activities such as rodeos and other types of personal appearances.

(49) Now to permit the defendants Republic Productions, Inc. and Republic Pictures Corporation, or either of them, or anyone claiming under or through said defendants or either of them, to assert or exercise any right whatsoever to use or authorize others to use plaintiff’s name, voice or likeness (whether in still photographs or in motion pictures or otherwise or at all) for commercial advertising purposes would cause plaintiff immediate, substantial and irreparable damage and would also immediately and substantially damage those licensed by plaintiff, for each of which reasons said: defendants Republic Productions, Inc. and Republic Pictures 'Corporation, and each of them, and any and all persons claiming through or under them or either of them, including but not limited to the defendant Hollywood Television Service Inc., are and each of them is estopped now to claim or assert or exercise any right, license or authority which they might otherwise have had or claimed to have had to use or authorize others to use the name, voice or likeness of plaintiff (whether in still photographs or in motion pictures or otherwise or at all) for commercial advertising purposes.

(50) The defendants Republic Productions, Inc. and Republic Pictures Corporation and each of them, prior to the commencement of the within action, waived any right, license or authority which they or either of them might otherwise have had or claimed to have had to use or authorize others to use the name, voice or likeness of plaintiff (whether in still photographs or in motion pictures or otherwise or at all) for commercial advertising purposes, first, by their conduct, second, in lieu oif additional salary, third, in consideration of 1(ie substantial and valuable publicity and advertising which defendants Republic Productions, Inc. and Republic Pictures Corporation received from plaintiff in the course of the exercise by plaintiff of said commercial advertising rights and as a result of plaintiff’s other outside activities such as rodeos and other types of personal appearances, and fourth, by the express provisions of the 1948 Agreement.

(51) At no time during the term of either the 1937 Agreement or during the term of the 1948 Agreement, did the defendant Republic Productions, Inc. request or call upon plaintiff to render any services in any so-called “television productions” or in connection with the broadcasting or transmission of his name, voice or likeness by means of television or broadcasting or in the production, exhibition or transmission of motion pictures by means of television or radio, nor did plaintiff render any such services. On the contrary, such services as were requested by the defendant Republic Productions, Inc. and rendered by plaintiff were solely in connection with the making of motion pictures which were produced 'for exhibition to the public upon the payment of an admission fee or charge, and such services were neither requested by said defendant Republic Productions, Inc. nor rendered by plaintiff for use for commercial advertising purposes.

(52) Immediate, substantial and irreparable damage and injury will be inflicted upon plaintiff if defendants are permitted to pursue their presently contemplated and threatened course of conduct and telecast or authorize others to telecast any of the eighty-one (81) motion pictures (listed in Exhibits B and D) -or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, on cither a sustaining basis or a commercially sponsored -basis, (except only to advertise, the defendant Republic Productions, Inc. as a producer of motion pictures and any of the motion pictures produced by 'said defendant under either the 1937 Agreement or the 1948 Agreement) and the Court expressly finds that any such telecast of any of said motion pictures or any .scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, will inflict immediate, substantial and irreparable injury upon plaintiff and will immediately, substantially and irreparably damage all elements of plaintiff’s commercial advertising -business, and will further inflict immediate, substantial and irreparable injury upon plaintiff in that the value of plaintiff’s name, voice or likeness for commercial advertising purposes will immediately be destroyed or substantially damaged and diluted, and that plaintiff’s name, reputation and good will, and the public’s trust, confidence and admiration for plaintiff will be immediately subjected to jeopardy and irreparable damage and injury in that under . defendant’s contemplated and threatened course of conduct the plaintiff’s name, voice and likeness will be associated with, will -be used in connection with, and will be used for the purpose of selling, products and services over the type, quality and character of which plaintiff will have no control.

(53) One of the principal elements of value to anyone using plaintiff’s name, voice or likeness in commercial advertising is the existence of control on the part of the plaintiff over the use of his name, voice or likeness by others whereby a user may be granted the exclusive right to use plaintiff’s name, voice or..likeness in the particular field or fields of such user. If defendants are permitted to pursue their present course of conduct and to telecast or permit others to telecast any of the motion pictures (listed in Exhibits B -and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness, of plaintiff appears or is used, for commercial advertising purposes, plaintiff would thereby be deprived of control over the use of his name, voice and likeness in said motion pictures or said scenes or sound tracks therefrom or said portions thereof, for commercial' advertising purposes, and would thereby be deprived of his ability to grant exclusivity in any particular field of endeavor to any particular user of his name, voice or likeness for commercial advertising purposes.

(54) It is customary in the radio and television industries for a sponsor to negotiate and contract in advance for programs to be broadcast or telecast over a period of at least thirteen (13) weeks, normally commencing in the Fall of each calendar year. The costs, expenses and commitments which must be made by a sponsor for both talent and station or network time in connection with commercially sponsored radio or television programs is very substantial and amounts to many thousands of dollars, much of which must normally and necessarily be committed for or expended far in advance of the actual date of broadcasting or telecasting of any given program and such programs by national advertisers may ultimately involve expenditures of several millions of dollars per annum. Pursuant to such custom, from a daté prior to September, 1950 until the month of April, 1951 the plaintiff negotiated with his then radio sponsor, The Quaker Oats Company, for a contract or contracts pursuant to which plaintiff would continue to appear on radio for said Company and would also begin appearances on television on behalf of said Company commencing not later than the Fall of 1951. As a result of, among other things, the defendants’ threats to telecast or allow others to telecast for commercial advertising purposes certain of the eighty-one (81) motion pictures listed in Exhibits B and D, the said The Quaker Oats Company terminated negotiations for a continuance of the radio program and for the contemplated new television program. Commencing immediately after the discontinuance of said negotiations with The Quaker Oats Company, the plaintiff continuously attempted to negotiate a contract or contracts with various other potential sponsors for his appearance on radio and television programs commencing in the Fall of 1951. As a result of said efforts plaintiff did make informal arrangements pursuant to which he commenced a thirteen (13) weeks’ radio program on or about October 5, 1951, but plaintiff was unable to arrange for a television program to commence in the Fall of 1951, and was unable to make any arrangements for cither radio or television programs which did not contain an option in favor of the sponsor whereby such sponsor could cancel such arrangement in the event that any of the eighty-one (81) motion pictures listed in Exhibits B and D (or any versions thereof modified and shortened so as to be suitable for use on a one hour television program) were telecast on either a sustaining or commercially sponsored basis. The claims and threats of the defendants, of which The Quaker Oats Company had knowledge shortly after they were first made in February 1950, were in fact a substantial and contributing cause of the termination of the negotiations between plaintiff and The Quaker Oats Company and interfered with and delayed plaintiff in making arrangements with said sponsor or others for radio or television appearances. The said claims and threats of the defendant have substantially interfered with and damaged plaintiff and the plaintiff has actually incurred substantial monetary damages as a. proximate result of said claims and threats, of defendants, but it is impossible upon the evidence adduced at the trial to ascertain the specific amount of monetary damages, suffered by plaintiff.

(55) Defendants’ present course of conduct and their claim to the absolute and unrestricted right to use and to authorize others to use for commercial advertising purposes any or all of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff appears or is used, and the claim of said defendants to the right to receive and retain substantial monetary consideration for such use now constitute and if permitted to continue will constitute unjust and unfair competition with the plaintiff and now constitute and will constitute a wrongful interference with and a violation of plaintiff’s long acknowledged and well established right freely and exclusively to engage in the business of using and of authorizing others to use his name, voice and likeness for commercial advertising purposes.

(56) Any allegations in the Answer of' defendants which are in any way contrary to or in conflict with any of the foregoing Findings of Fact are and each of them is. hereby found to be untrue.

From the foregoing Findings of Fact,, the Court makes the following

Conclusions of Law

(1) The Court concludes in all respects, as set forth in the foregoing Findings of Fact, and any Conclusion of Law that, is contained therein is hereby expressly incorporated in these Conclusions of Law with the same force and effect as thought expressly set forth herein. (2) This Couit has jurisdiction of the cause pursuant to Section 1332 of Title 28 of the United States Code.

(3) As against the defendants in this action and anyone claiming through or under them, or any of them, the plaintiff is the sole and exclusive owner of his name “Roy Rogers” and his voice and likeness and of the name and likeness of his horse “Trigger” for any and all commercial advertising purposes whatsoever and none of the defendants has any right to use plaintiff’s name, voice or likeness or the name or likeness of his horse Trigger (whether in still photographs or in motion pictures or otherwise or at all) for any commercial advertising purpose or purposes whatsoever.

(4) The defendants and each of them are estopped to use or authorize others to use plaintiff’s name, voice or likeness or the name or likeness of his horse Trigger (whether in still photographs or in motion pictures or otherwise or at all) for any commercial advertising purpose or purposes whatsoever.

(5) The defendants and each of them have waived any right which they or any of them might ever have had or claimed to have had to use or authorize others to use plaintiff’s name, voice or likeness or the name or likeness of his horse Trigger (whether in still photographs or in motion pictures or otherwise or at all) for any commercial advertising purpose or purposes whatsoever.

(6) Such limited commercial advertising rights as were granted by the plaintiff to the defendant Republic Productions, Inc. expired upon the termination of the 1948 Agreement on or about May 27, 1951, and neither the provisions of the 1937 Agreement nor the provisions of the 1948 Agreement granted to the defendants or any of them any right whatsoever from and after May 27, 1951, to use or authorize others to use plaintiff's name, voice or likeness or the name or likeness of his horse Trigger (whether in still photographs or in motion pictures or otherwise or at all) for any commercial advertising purpose or purposes whatsoever.

(7) The telecasting or broacasting of any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff or of his horse Trigger appears or is used, on either a sustaining basis or commercially sponsored basis, or any other use of plaintiff’s name, voice or likeness or the name or likeness of his horse Trigger (whether in still photographs or in motion pictures or otherwise or at all) in any other advertising medium or media, for any commercial advertising purpose or purposes whatsoever would constitute unfair competition with the plaintiff.

(8) Immediate, substantial and irreparable damage and injury will be inflicted upon the plaintiff if defendants are permitted to telecast or broacast or authorize others to telecast or broadcast any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff or of his horse Trigger appears or is used, on either a sustaining basis or commercially sponsored basis, or use or authorize others to use plaintiff’s name, voice or likeness or the name or likeness of his horse Trigger (whether in still photographs or in motion pictures or otherwise or at all) in any other advertising medium or media, for any commercial advertising purpose or purposes whatsoever.

(9) Plaintiff has actually incurred substantial monetary damages as a proximate result of the claims, threats, acts and conduct of defendants but the amount thereof cannot be ascertained from the evidence adduced at the trial, and plaintiff is therefore not entitled to a judgment for money damages.

(10) Plaintiff has no plain, speedy or adequate remedy at law.

(11) Plaintiff is entitled to a permanent injunction against defendants and each of them, and their respective officers, agents, servants, employees, attorneys and all persons in active concert or participation with them or any of them, enjoining and restraining them, and each of them, from in any manner using, exhibiting, teler casting, broacasting, leasing, selling, licensing or disposing o-f or authorizing any other or others in any manner to use, exhibit, telecast, broadcast, lease, sell, license or dispose of, for any commercial advertising purpose or purposes whatsoever, the name, voice qr likeness of the plaintiff Roy Rogers or the name or likeness of plaintiff’s horse Trigger (whether in still photographs or in motion pictures or otherwise or at all) in or on any advertising medium or media whatsoever, including but without in any way limiting the generality of the foregoing, any use, exhibition, telecast (on either a sustaining basis or a commercially sponsored basis), broadcast (on either a sustaining basis or a commercially sponsored basis), lease, sale license or disposored basis), lease, sale, license or disposition, for any commercial advertising purpose or purposes whatsoever of any of the eighty-one (81) motion pictures (listed in Exhibits B and D) or any scene or sound track therefrom or any other portion thereof in which the name, voice or likeness of plaintiff or of his horse Trigger appears or is used.

(12) Plaintiff is entitled to an order forever releasing and exonerating plaintiff and his surety (National Surety Corporation, a New York Corporation) and each of them, from that certain “Undertaking on Temporary Restraining Order and Preliminary Injunction” filed herein on June 23, 1951, and that certain “Additional Undertaking on Preliminary Injunction” filed herein oil July 25, 1951, and from each of said Undertakings.

(13) Plaintiff is entitled to recover his costs herein incurred.

Let Judgment Be Entered Accordingly.

Exhibit A.

REPUBLIC PRODUCTIONS, INC.

AGREEMENT executed at North Hollywood, California, October 13, , 19 37 , by and between REPUBLIC PRODUCTIONS, INC., a New York corporation, hereinafter referred to as the “producer”, and LEONARD SLYE .........................hereinafter referred to as the “artist”,

WITNESSETH:

For and in consideration of the covenants, conditions and agreements hereinafter contained and set forth, the parties hereto have agreed and do hereby agree as follows:

1. The producer hereby employs the artist to render his exclusive services as herein required for and during the term of this agreement and the artist hereby accepts such employment and agrees to keep and perform all of the duties, obligations and agreements assumed and entered into by him hereunder.

2. The artist agrees that throughout the term hereof he will render the services hereinafter specified, solely and exclusively for and as requested by the producer; that he will render his services as an actor in such roles and in such photoplays and/or other productions as the producer may designate; that he will make persoual appearances in motion picture theatres and/or other places of entertainment and/or will render his services as an actor in vaudeville, plays and/or in all other kinds of performances on the speaking stage; that he will render his services as a radio performer, not only by broadcasting in person, but also by making electrical transcriptions and/or by any other present or future methods or means; that he will render his services as an actor in television productions ; and that he will render his services in connection with the broadcasting and/or transmission of his likeness and/or voice by means of television, radio and/or otherwise, whether such broadcasting and/or transmission be either directly or indirectly in connection with or independent of photoplays. The artist further agrees that he will promptly and faithfully comply with all reasonable instructions, directions, requests, rul