dard opening and closing for the series. There also was evidence that Disney sold reel-to-reel movies containing the Compositions for home use.
- b. Videocassettes
The first videocassette recording that Disney made and sold containing Bourne’s copyrighted compositions was the subject of a 1979 license agreement between Bourne and Disney (“the 1979 Agreement”). Pursuant to this agreement, Disney received a license to manufacture and sell videocassette recordings of a live theatrical performance of the Snow White compositions held at Radio City Music Hall. Bourne received a 68 cent royalty for each videocassette sold.
In the early 1980s, Disney introduced videocassettes containing various animated pictures synchronized with Bourne’s compositions. In 1985, Disney released the full-length motion picture Pinocchio on videocassette. Prior to this time, Disney had a policy of prohibiting the exploitation of its full-length feature films in media other than theatrically-exhibited film. Indeed, pursuant to Disney’s policy, films such as Snow White and Pinocchio were exhibited in theaters every six to eight years. This policy was abandoned after a change in Disney’s management in 1984. The Pinocchio videocassette remained on Billboard’s list of top-selling videocassettes for almost three years.
Since the release of Pinocchio, Snow White also has been distributed on videocassette. Besides the release of Disney’s feature films, the Compositions have been used by Disney in connection with “sing-along” programs and certain cartoons.
- c. Advertising
Disney also has used the Compositions in paid television commercials to advertise its theme parks and the theatrical releases of Snow White and Pinocchio. Overall, Disney utilized such paid television advertising infrequently and on a regional, rather than a national, basis until the mid-1980s. On several occasions, Disney obtained licenses from Bourne for the use of the Compositions in its commercials. In 1975, Bourne issued a license to Disney for a television commercial using the song “When You Wish Upon a Star” to promote Disneyland. In 1977, Disney paid Bourne a fee to use one of its copyrighted compositions from Snow White in connection with a television advertisement for Disney World and Eastern Airlines. Again, in 1985, Disney obtained a license from Bourne for the use of the Compositions in its television commercials.
In the majority of instances, however, Disney has used the Compositions in its paid television advertisements without obtaining a license from Bourne. In January of 1987, Disney began its “What’s Next” series, in which it used the song “When You Wish Upon a Star” in a national television campaign without a license from Bourne. Disney also used the Compositions in television commercials to promote the theatrical releases of Pinocchio in 1984 and Snow White in 1987, even though it had not obtained a license.
3. Proceedings Below
Following an eleven-day trial,[1] the jury returned a verdict in favor of Bourne on its second claim, finding that Disney infringed Bourne’s copyrights by using the Compositions in television advertising. On Bourne’s first claim, concerning Disney’s right to use the Compositions in videocassettes, the jury found for Disney. The parties stipulated to the sum of $420,000 in damages. The district court denied Bourne’s post-trial motions for attorney’s fees and a new trial on the basis of newly discovered evidence, and granted its motions for costs and prejudgment interest.
DISCUSSION
1. Disney’s Rights to Make and Sell Videocassettes
- a. Disney’s Rights in Snow White
Bourne argues that the district court erred in submitting to the jury the question of
- ↑ In an earlier appeal to this court, Bourne Co. v. Tower Records, Inc., 976 F.2d 99 (2d Cir.1992), we reversed the district court’s grant of a preliminary injunction in favor of Bourne. We held that Bourne had failed to establish that it would suffer irreparable harm absent the issuance of an injunction, primarily because Disney had, for decades, used the Compositions for purposes other than the theatrical exhibition of motion pictures.
