ROTH, P. J., Concurring and Dissenting. I concur in the court’s decision that in this case there can be but one cause of action, for unfair competition. I would, however, also uphold the trial court’s determination that plaintiffs cannot, as a matter of law, allege a secondary meaning.
By this action the Lutzes, despite having been unsuccessful in earlier attempts to establish that anyone who writes about Amityville invades their privacy and misappropriates their right of publicity,1 and despite having surrendered to defendants’ predecessors an interest in the copyright in the book written by Jay Anson, are trying out yet another theory to preserve unto themselves the exclusive right to tell Amityville tales. The new theory, of unfair competition by misappropriation of secondary meaning, has no more vitality than the other theories. I would hold that the plaintiffs cannot, as a matter of law, claim that Amityville stories are identified in the public’s mind as originating exclusively with them and, since there is no precedent supporting a claim of nonexclusive secondary meaning, the trial court properly dismissed the action.
As we recognized in Tomlin v. Walt Disney Productions (1971) 18 Cal.App.3d 226, 232 [96 Cal.Rptr. 118], the protection the law affords against unfair competition by exploiting public confusion as to the source of goods or services is an exception to the policy of a free and competitive economy. That protection should not be loosely expanded, particularly when the defendant’s products are literary works, for in such an instance the policy favoring freedom of artistic expression is also implicated.
The key to the case at bench is exclusivity, a cornerstone of the principle of secondary meaning. The rule was clearly explained in Gordon v. Warner Bros. Pictures, Inc. (1969) 269 Cal.App.2d 31, 35-36 [74 Cal.Rptr. 499], quoting from a federal case said by a treatise writer to be one of the best known and most accurate summaries of the secondary meaning rule: “ ‘The theory of secondary meaning contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that [1326]branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trademark.’” (Italics added.)
The court continued, quoting from our Supreme Court’s opinion in Academy of Motion Picture, etc., v. Benson (1940) 15 Cal.2d 685, 690 [104 P.2d 650]: “If plaintiff proves that the name or word has been so exclusively identified with his goods or business as to have acquired a secondary meaning, so as to indicate his goods or business and his alone, he is entitled to relief against another’s deceptive use of such terms, but if he fails in such proof, he is not entitled to relief.'''’ (Italics added.)
The judgment should be affirmed because the record clearly shows that as a matter of law whatever secondary meaning “Amityville” had achieved was not the exclusive property of plaintiffs.
The public’s association of Amityville with horror stories could not, at the time defendants made the second and third pictures, have been exclusively the result of the first and second books. To the contrary, the association must have been in substantial measure the result of the release of the first picture, which was a runaway commercial success because it captured the public’s attention and imagination. This picture was the creation of defendants’ predecessor in interest, not the Lutzes or Anson or Jones or Kimatian or Gotham Press. The Lutzes had no significant participation in the making of the picture, and the other plaintiffs had no participation in it whatever. Appellants’ suggestion that they will prove at trial that The Amityville Horror is associated in the public’s mind with the names George and Kathleen Lutz, is ludicrous.
Indeed, defendants have as much rights in these haunted house stories as the Lutzes, having paid the Lutzes and Anson for an interest in the copyright of Anson’s book. It is astonishing that the Lutzes should sell exclusive and perpetual motion picture and television rights to the first book, including the title “The Amityville Horror, ” to a picture company, then claim that any proprietary rights in a resulting secondary meaning of that title still belong to them exclusively. The only picture right the Lutzes held back from PFI was the right to make theatrical and television sequels depicting the Lutzes in subsequent events. And even in this reservation, the Lutzes promised PFI they would not, in the exercise of the reserved rights, depict any of the events depicted in the first book.
In addition, the public’s association of Amityville with horror was not solely the result of the first two books and the first picture—the three works [1327]in the origin of which plaintiffs are associated. The mass murder in the Amityville house and its supernatural legacy were well publicized at the time, drawing the attention of newspapers, magazines, television reports, the Church, and resulting in another book, Hans Holzer’s Murder in Amity-ville, and even plaintiffs do not dare claim to be the proprietary owners of all secondary associations resulting from this publicity.
The DeFeo murders and the Amityville hauntings became topics of public interest long before defendants made the second and third pictures. A group of individuals who own two published books cannot claim to have a monopoly on the commercial exploitation of widely publicized events of public interest; such a claim is beyond the rights given them by either the copyright law or the law of unfair competition.
Lack of exclusivity of ownership is fatal to a claim of unfair competition based on secondary meaning. In Black Hills Jewelry Mfg. Co. v. LaBelle’s (D.S.D. 1980) 489 F. Supp. 754, 762, three plaintiffs sued to establish their exclusive right to the use of the term Black Hills Gold Jewelry. Though granting limited relief under the Lanham Act to prevent defendants from misleading the public as to the geographic origin of their products, the court held that “to establish a secondary meaning, while it is not necessary to show that the public has become conscious of the personal identity of the manufacturer, it must be shown that whatever is asserted to carry the secondary meaning has come to signify origin from a single, though anonymous source. fl|] In that there are three plaintiffs, there cannot be a single source of the product in question and Plaintiffs are precluded as a matter of law from establishing secondary meaning.” (Italics added.) The Court of Appeals affirmed, noting plaintiffs did not question the trial court’s conclusion on the issue. (Black Hills Jewelry Mfg. v. Gold Rush, Inc. (8th Cir. 1980) 633 F.2d 746, 749.)
Similarly, in Universal City Studios v. Nintendo Co. (S.D.N.Y. 1983) 578 F. Supp. 911, 923-926, the court granted defendant’s motion for summary judgment, holding that plaintiff could not, as a matter of law, establish secondary meaning in the name King Kong, because plaintiff did not own all rights in the name and image, and not all King Kong products in the market had a single source of origin. The Court of Appeals affirmed without reaching the issue. (Universal City Studios, Inc. v. Nintendo Co., Ltd. (2d Cir. 1984) 746 F.2d 112, 115.)
Here, as in the two cases just cited, both the lack of exclusivity of plaintiff’s ownership in the title Amityville and the fact that plaintiffs are not the [1328]sole source of origin of Amityville works bar their claim based on secondary meaning.
The usual unfair competition case involving literary works presents no factual difficulty in determining what individual or business has a sufficient property right in a product or service to be able to claim protection against unfair competition. To cite just a few examples, in Allied Artists Pictures Corp. v. Friedman (1977) 68 Cal.App.3d 127 [137 Cal.Rptr. 94], plaintiff had the exclusive right to market a motion picture the title of which undisputedly enjoyed a secondary meaning. In Jackson v. Universal Internat. Pictures (1950) 36 Cal.2d 116 [222 P.2d 433], plaintiff was the author of the stage play whose title was found to have a secondary meaning. In Gordon v. Warner Bros. Pictures, Inc., supra, 269 Cal.App.2d 31, plaintiffs were the authors of a novel whose title was claimed to have a secondary meaning.
In cases where ownership was less clear, the courts have not missed the significance of the point. For instance, one of the holdings of our own decision in Tomlin v. Walt Disney Productions, supra, 18 Cal.App.3d 226, 238-239, was that an unfair competition claim based on secondary meaning may not be brought by the composer of a song who had assigned his rights in the composition to a music publisher. Sinatra v. Goodyear Tire & Rubber Co. (9th Cir. 1970) 435 F.2d 711, applying California law, rejected the unfair competition claim of a plaintiff where the copyright of the song she was famous for singing, and which defendant used without her consent, was owned by someone else.
This case is similar. The Lutzes and Anson sold PFI all motion picture rights in the first book and in its copyright, with the sole exception of the reserved right to make a sequel depicting the Lutzes in subsequent events. (Although the complaint alleges the reservation of all sequel rights, this allegation is clearly contradicted by the parties’ written agreement.) Having licensed The Amityville Horror to PFI, they (and Jones, Kimatian, and Gotham Press, who came later) simply cannot show the requisite exclusivity of their interest in the title “The Amityville Horror.”
Plaintiffs’ contention that the Lutzes and Anson reserved, in their agreement with PFI, the right to exploit any secondary meaning of the title of the first book, by not mentioning that they were conveying that right, is disingenuous. Having conveyed all motion picture and television rights exclusively and in perpetuity to PFI, the Lutzes and Anson cannot claim that they remained the exclusive owners of the right to exploit any secondary meaning theretofore or thereafter attaching to the name Amityville. The agreement was lengthy and detailed; the only motion picture and television [1329]rights reserved by the Lutzes and Anson were the right to make sequels depicting subsequent events in the Lutzes’ lives; had the Lutzes wished to assure that PFI and its successors and assigns would make no other types of sequels, and had PFI been willing to so agree, the contract would have contained such a provision. In the face of the careful and narrow definition of the sequel rights reserved by the Lutzes, it is hard to understand how they can assert that they also implicitly reserved the right, through the doctrine of unfair competition, to prevent PFI and its assigns from making any sequels without their consent. The second and third pictures were not about the Lutzes, who had no monopoly on the creation of horror stories set in the house where the DeFeo murders occurred.
In addition, even under the theory that defendants, by the titles they gave the second and third pictures, mislabeled them as to source, any valuation of the harm plaintiffs might have suffered thereby would be totally speculative. Plaintiffs cannot be awarded a portion of defendants’ profits from the second and third pictures, for any supposed “evidence” of the proportion of the profits attributable to the titling of those pictures would be mere guesswork. Similarly, plaintiffs cannot recover compensation for depreciation of the value of their own plans to make a motion picture based on the second book, for there is no way for a factfinder to determine, to even the slightest degree of probability, what profits, if any, such a picture might have produced.
Appellants’ complaint is replete with sweeping factual allegations which are essential to their claims but are flatly contradicted by the terms of the agreement with PFI. For instance, they alleged, “Professional Films, Inc. was granted the right to use the title ‘The Amityville Horror’ as the title of a motion picture version of the Amityville Book produced pursuant to the Literary Purchase Agreement, but the Lutzes reserved unto themselves all other rights to use the title.” In fact, the agreement conveyed to PFI “all motion pictures rights ... in and to the Property,” and the property was defined as including the book “and the plots, themes, titles, characters and copyright thereof.”
At oral argument, plaintiffs’ counsel conceded that anyone, including defendants, could make more horror pictures about fictional events set in the Amityville house or about real events set in the Amityville house before the Lutzes moved there. He maintained, however, that any such picture could not be identified or promoted as a sequel to the first picture because of plaintiffs’ efforts to arouse public interest in the Amityville house. This position cannot be sustained. Subsequent pictures, no matter what they were named, were in fact sequels to the first picture, that is, pictures on a [1330]related subject which followed the first. The public knew nothing about the source of the first book other than that its author was Anson, and similarly the public knew nothing about the source of the first picture, except that those who paid attention to the credits saw that it was released by American International Pictures.
In sum, this case is nothing more than an unjustified attempt by plaintiffs to arrogate unto themselves the right to commercially exploit the name of the town of Amityville to the exclusion of the literary, artistic, and commercial worlds. An already overburdened judicial system should not be subjected to protracted litigation of claims that patently lack merit. Although the existence of secondary meaning usually raises factual questions, where, as here, the relevant facts are undisputed and are so extreme that no reasonable trier of fact could find that secondary meaning exists, the action is properly dismissed at the pleading stage. I would affirm the trial court judgment in its entirety.
Respondents’ petition for review by the Supreme Court was denied September 21, 1989.
See Lutz v. Hoffman (E.D.N.Y. 1979) 4 Media L. Rptr. 2294.