(originally published in Negative Print Fanzine, September 1983)
The “Godfather Works” and the Godfather of Soul – Contracts for Assignment and Licensing of Rights Often Require Predictions of the Future
When authors and musicians grant movie and television rights to use their works, it is considered to be an emblem of their success, as they receive not only monetary gain but a big assist to their fame. As much as the artists agree to assignments of certain rights in the present, they must also anticipate how those rights could benefit them in the future. A contract that assigns all copyrights to a work without any reservation of rights by the artist could cut him or her out of a lucrative payday for products created from their original work in formats and on platforms that were not invented at the time of the assignment. Contracts granted in the 1960s by Mario Puzo for rights to use his book “The Godfather”, and by James Brown for rights to use his performance on a 1965 television program called “The TAMI Show” both generated litigation over the language used.
On February 12, 2012, Paramount Pictures sued the family of the author of the original novel, “The Godfather”, Mario Puzo, for copyright and trademark infringement. Mr. Puzo had assigned his entire copyright to the novel to Paramount in 1969, granting them, among other rights, “any and all copyrights therein and all rights now known and hereafter accruing therein and thereto, forever and throughout the world, together with the sole and exclusive right to use said work, in whole or part, in whatever manner the Purchaser (i.e., Paramount) may desire including, but not limited to, the sole and exclusive right: to make and cause to be made literary and dramatic and other versions and adaptations of every kind and character of said work or any part or parts thereof and/or any or all of the characters created therein … [and] to adapt, arrange, change, interpolate in, transpose, add to and subtract from said work to such extent as the Purchaser, in its sole discretion, may desire in connection with any use which the Purchaser may make of said work.”[1] Mr. Puzo did not reserve any rights to The Godfather, except the right to publish the original novel in book form. He did not reserve the right to publish a sequel based on the characters in the first novel.
Trade Secrets and Reverse Engineering – When does Industry Expertise Become Misappropriation?
I. Introduction
A recent case on computer software has defined the standards for trade secret violations in a reverse engineering case. The court in Aqua Connect, Inc. v. Code Rebel, LLC[1] emphasized that under the California Uniform Trade Secret Act[2] , “improper means” does not include reverse engineering or independent derivation alone; it must be combined with some other improper action to form the basis of a cognizable misappropriation claim.”[3] In the case, a computer software company acquired the plaintiff’s software by downloading a free trial version. However, the version included a “clickwrap” agreement in which the user specifically warrants that he or she will not reverse engineer the software. The court notes that the plaintiffs may have a cause of action in breach of contract based on the clickwrap agreement, but the means by which the software was obtained was not an “improper means” under the statute. Putting aside whether such clickwrap agreements can override the state statute by forbidding reverse engineering, which is clearly allowed under the uniform trade secret law[4], questions remain about what kind of other improper means must be proven along with reverse engineering to state a trade secret misappropriation claim?
