Silverman v. CBS, Inc.
870 F.2d 40 (1989)
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Rule of Law:
A trademark is abandoned under the Lanham Act when its use has been discontinued with an intent not to resume use within the reasonably foreseeable future. Additionally, a copyright in a derivative work protects only the new, original expression added by the author of that work and does not extend to or revive protection for underlying material that is in the public domain.
Facts:
- In 1928, Freeman Gosden and Charles Correll created the 'Amos 'n' Andy' characters and radio show.
- Gosden and Correll assigned all their rights in the show's scripts and radio programs to CBS Inc. in 1948.
- CBS produced radio programs until 1955 and a television series that ran in some form until 1966.
- In 1966, responding to complaints from civil rights organizations that the programs were demeaning to Black people, CBS voluntarily ceased all airing and licensing of the 'Amos 'n' Andy' programs.
- The copyrights for the radio program scripts created before the 1948 assignment to CBS were not renewed and consequently entered the public domain.
- In 1981, writer Stephen Silverman began developing a Broadway musical based on the 'Amos 'n' Andy' characters, intending to use material from the public domain scripts.
- Silverman sought a license from CBS to use the characters, but CBS refused.
- At the time of the dispute, CBS had not commercially used the 'Amos 'n' Andy' marks for over 20 years but asserted it intended to resume use if the social climate became more hospitable.
Procedural Posture:
- Stephen Silverman filed a lawsuit against CBS Inc. in the U.S. District Court for the Southern District of New York, seeking a declaratory judgment of his right to use public domain 'Amos 'n' Andy' materials.
- CBS asserted counterclaims for copyright infringement, trademark infringement under the Lanham Act, and state unfair competition claims.
- The District Court granted partial summary judgment, finding that Silverman infringed CBS's copyrights in post-1948 radio scripts, but that the pre-1948 scripts were in the public domain.
- After a bench trial on the trademark issue, the District Court concluded that CBS had not abandoned its 'Amos 'n' Andy' trademarks.
- The District Court entered a final judgment awarding damages and injunctive relief to CBS, declaring its trademarks valid, and voiding Silverman's copyright registration.
- Silverman appealed the District Court's judgment to the U.S. Court of Appeals for the Second Circuit.
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Issue:
Does a company's voluntary non-use of a trademark for over two decades, coupled with an absence of concrete plans to resume its use in the reasonably foreseeable future, constitute abandonment under the Lanham Act, even if the non-use was for socially commendable reasons and the company expresses a vague intent to resume use at some indefinite point?
Opinions:
Majority - Newman, J.
Yes. A company's voluntary non-use of a trademark for over two decades, without concrete plans for resumption in the reasonably foreseeable future, constitutes abandonment. The court held that the Lanham Act's requirement of 'intent not to resume' use means an intent not to resume within the reasonably foreseeable future, not an intent never to resume use. Two consecutive years of non-use creates a prima facie case of abandonment, and CBS's 21 years of non-use easily met this threshold. CBS's laudable social motives for discontinuing the programs and its vague assertion of a possible future use were insufficient to rebut the strong presumption of abandonment. On the copyright issues, the court ruled that Silverman is free to use the characters, plots, and dialogue from the pre-1948 radio scripts that are in the public domain. CBS's copyrights in the post-1948 derivative works only protect the new, original expression added in those works, not the underlying public domain material.
Analysis:
This decision significantly clarifies the standard for trademark abandonment, establishing that the 'intent not to resume use' must be an intent to resume within the 'reasonably foreseeable future.' It prevents proprietors from 'warehousing' trademarks indefinitely, even for socially sensitive reasons, thereby promoting the active use or release of marks into the public sphere. The ruling also reinforces a fundamental copyright principle: derivative works cannot be used to recapture or extend copyright protection over material that has already entered the public domain. This provides crucial guidance for creators who wish to adapt or build upon public domain works, ensuring that the public domain remains a robust source for new creative expression.
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