Cite as 562 F.2d 1157 (1977)
Plaintiffs argue on appeal that the district court erred in awarding damages pursuant to 17 U.S.C. § 101(b). They contend that the court should have ordered an accounting of profits by defendants or, alternatively, should have awarded statutory “in lieu” damages.
Defendants cross-appeal. They contend that their television commercials did not infringe upon plaintiffs’ television series as a matter of law. To find infringement, they suggest, would abridge their first amendment rights. They also refute plaintiffs’ contentions as to damages.
We believe that the district court’s finding of infringement was not clearly erroneous, and see no merit to defendants’ first amendment claims. We find, however, that the district court was in error in awarding damages. We therefore affirm in part, reverse in part, and remand for further proceedings.
Facts
In 1968, Sid and Marty Krofft were approached by the NBC television network to create a children’s television program for exhibition on Saturday morning.[1] The Kroffts spent the next year creating the H. R. Pufnstuf television show, which was introduced on NBC in September 1969. The series included several fanciful costumed characters, as well as a boy named Jimmy, who lived in a fantasyland called “Living Island,” which was inhabited by moving trees and talking books. The television series became extremely popular and generaed a line of H. R. Pufnstuf products and endorsements.
In early 1970, Marty Krofft, the President of both Krofft Television and Krofft Productions and producer of the show, was contacted by an executive from Needham, Harper & Steers, Inc., an advertising agency. He was told that Needham was attempting to get the advertising account of McDonald’s hamburger restaurant chain and wanted to base a proposed campaign to McDonald’s on the H. R. Pufnstuf characters. The executive wanted to know whether the Kroffts would be interested in working with Needham on a project of this type.
Needham and the Kroffts were in contact by telephone six or seven more times. By a letter dated August 31, 1970, Needham stated it was going forward with the idea of a McDonaldland advertising campaign based on the H. R. Pufnstuf series. It acknowledged the need to pay the Kroffts a fee for preparing artistic designs and engineering plans. Shortly thereafter, Marty Krofft telephoned Needham only to be told that the advertising campaign had been cancelled.
In fact, Needham had already been awarded McDonald’s advertising account and was proceeding with the McDonaldland project.[2] Former employees of the Kroffts were hired to design and construct the costumes and sets for McDonaldland. Needham also hired the same voice expert who supplied all of the voices for the Pufnstuf characters to supply some of the voices for the McDonaldland characters. In January 1971, the first of the McDonaldland commercials was broadcast on network television. They continue to be broadcast.
Prior to the advent of the McDonaldland advertising campaign, plaintiffs had licensed the use of the H. R. Pufnstuf char-
- ↑ The Kroffts are fifth generation puppeteers who have been in the entertainment industry in this country over 40 years. The evidence showed that they enjoyed years of success with their puppet shows in cities around the country—most notably the Le Puppet de Paris adult puppet show. The Kroffts created the characters for “The Banana Splits,” a popular children’s television series produced by Hanna Barbera, before being asked to create their own show.
- ↑ On June 24, 1970, Needham made a presentation of a McDonaldland advertising campaign to McDonald’s. Needham was awarded the account by a contract dated June 29, 1970. In July, three representatives of Needham came to the Kroffts’ offices in Los Angeles to discuss the design and engineering work that would be required to produce the McDonaldland commercials. It is evident, therefore, that Needham was deceiving the Kroffts in their contacts after the June 29 contract.
