Bourne Co. v. Twentieth Century Fox Film Corporation et al

Filing 32

DECLARATION of Marco Berrocal in Support re: 28 MOTION for Summary Judgment.. Document filed by Bourne Co.. (Attachments: # 1 Exhibit Exhibits A-C, # 2 Exhibit Exhibits D-E, # 3 Exhibit Exhibit F, # 4 Exhibit Exhibit G-H)(Fakler, Paul)

Bourne Co. v. Twentieth Century Fox Film Corporation et al

Doc. 32

Ross Charap (RG2584) Paul M Fakler (PF-0249)
Julie Stark OS-8925)

Amnda J. Schaffer (AS-2004) MOSES & SINGER LLP 405 Lexington Avenue New York, New York 10174-1299
TeL.: [phone]

Fax: [phone] pfakletW mosessinger.com
A tt for Plaintff Bou Ca
UN1ED STATES DISTRCT

COURT

SOUTRN DISTRCT OF NEW YORK
CO.,
Plaintiff,

x

BOUR

07 Civ. 8580 (DAB)

- against-

TWNTE1H CENfY FOX FILM
CORPORATION, FOX BROADCATING

DECLARTION OF MARCO BERROC

COMPAN, TWNTE1HCENfYFOX
TELEVISION, INC, TWNTE1H CENfY
FOX HOME ENTRTAINMNT, INC, FUZZY DOOR PRODUCTONS, INC, 1B CATOON

NEIWORK, INC, SE1H MACFAR,
WALTER

MUHY,

Defendants.

X
1. I am the President of Bourne Co. ("Boure") and, as such, I am fuly famiar

with the facts set forth in this declaration and the documents attached hereto. I submit this

declaration in support of Bourne's Motion for Summry Judgment on Liabilty and in

Opposition to Defendants' Motion for Sumry Judgment on Fair Use.

688743v2 009207.01022

Dockets.Justia.com

Bourne's Ownership of

When You Wish Upon a Star

2. Boure was founded in 1919 and is one of the world's largest independent
international music publishing companies. Bourne is the sole United States copyrght owner
of "When You Wish Upon a Star" ("Star").
3. "Star" was wrtten by Leigh Harlie and Ned Washington and is one of the

most famous songs of all time. The song was originally

wrtten for the classic Walt Disney

fil, "Pinocchio" in which it was sung by Clf Edwards as the voice of the character Jimy
Cricket. With its theme of wholesome hopefulness, the song has gained worldwide statu as
a classic.

4. The Walt Disney Company registered its claim to copyrght in the

unpublished version of Star, as it appears in "Pinocchio," in 1938. Attached hereto as
Exhibit" A" is a true and correct copy of that certificate of registration.

5. Boure's predecessor in interest, Irving Berli, Inc., purchased all rights to
"Star" from the Walt Disney Company in 1939. Attached hereto as Exhibit "B" is a true
and correct copy

of the assignment of "Star" to Irving Berli, Inc., dated August 15,1939.

6. Irving Berli, Inc. published sheet music for "Star" in 1940, and registered its

claim to copyrght in that published version of "Star" that same year. Attched hereto as
Exhibits "C" and "D" are true and correct copies of that certificate of registration and the
sheet music deposit for the registration. Since that time, Bourne (including its predecessors)

has published and registered its copyrght in many

other arrngements of "Star."

7. In 1944, Irving Berli, Inc. changed its corporate name to Boure, Inc..

Attached hereto as Exhibit "E" is a true and correct copy

of the Certificate of Change of

Name of Irving Berli, Inc. to Boure, Inc., dated September 26, 1944.

688743v1 009207.0102

2

8. In 1961, Bourne Inc. was converted to a proprietorship, and the name was

changed to Bourne Co. Attched hereto as Exhibit "F" is a true and correct copy of the
Business Certificate evidencing that Bourne Co. is the successor in interest to Bourne, Inc.,
dated

June 30, 1961.

9. Bourne renewed its copyrght in the unpublished version of "Star" in 1966.
Attached hereto as Exhibit "G" is a true and correct copy

of the certificate of renewal

registration.
10. Bourne renewed its copyrght in the published version of "Star" in 1967.
Attached hereto as Exhibit "H' is a true and correct copy

of the certificate of renewal

registration.

The Popularity of When You Wish Upon a Star
11. "Star" has only grown in popularity

since it was introduced in 1940. Since

then, the song has been recorded by

over 100 performg artists and orchestras and has

become a cultural treasure, epitomiing the wonders of childhood and the powers of love,
hope and belief.

12. The American Fil Institute recently rankd "Star" seventh in the API's list
of the 100 Greatest Songs in Fil History. The beautiful and heartfelt lyrcs are known the
world over.
13. Star is considered to be a standard and is used extensively in commercials,

television and fil Although we license" Star" to Disney for vanous uses, most of our

licenses of "Star" are not to Disney. We own and license many

other songs from Disney
experience,

movies and are famiar with how these songs are viewed and used. From my

"Star" is not associated with Walt Disney personally.

688743vl 009207.0102

3

14. Star is one of Bourne's most important and valuable songs.

Defendants' Use is Harmng the Value of

When You Wish Upon a Star

15. "Star" has a unique value that arises from its fame and association with

wholesome and sweet themes. When licensees seek to use a song li "Star" in a movie,
television show or commercial, they choose" Star" over other songs because of the feeligs

and themes the song evokes. For this reason, Bourne wi not license the use of "Star" in
ways that wi damage that association.
16. That is not to say that we wi only license "Star" for stodgy

or serious uses.

To the contrary, and as set out in more detail in the Declaration of Jerr Horan ("Horan
Decl."), we have licensed many comedic and ireverent uses of "Star." The important point
for us is that even where the song is used in a funy way, the use is not highly

offensive in a

way

that would cause negative associations with "Star."
17. The reason Boure would not license Defendants' use of "Star" is not

because that use makes fun of "Star." Their use does not make fun of or criticize "Star" in
anyway. Rather, we would not license such a use because it associates "Star" with highly
offensive and hurful

lyrcs that portray Jewih stereotyes and the claim that Jews as a

people are responsible for kig Jesus Chrit as amusing and funy.
18. If uses such as Defendants' unlicensed use were widespread, it would cause

grave damage to Bourne's business. Firt, a greater number of highly

offensive uses would

further harm the reputation of Star. Second, we would be deprived of licensing revenue to
which we are entitled for such uses. Third, those unlicensed uses would compete with and
substitute for our licensed comedic uses, suppressing demand for licensed uses.

688743v1 009207.0102

4

19. I declare under penalty of pe~ury that the foregoing is true and correct.

Executed on May 22, 2008, at New York, NY.

688743v1 009207.0102

5