## Facts

- Frank Zappa was a prominent musician who created works in audio and video formats.
- After Frank Zappa’s death, his widow, Gail Zappa, controlled rights associated with Frank Zappa’s name, voice, photograph, and likeness through Glovaroma, Inc. and the Zappa Family Trust (collectively, Glovaroma).
- Glovaroma produced and distributed Frank Zappa video programs under the registered trademark “Honker Home Video.”
- Maljack Productions, Inc. (MPI), doing business as MPI Home Video, licensed and distributed video products.
- In December 1987, Glovaroma and MPI entered an oral agreement allowing MPI to produce, distribute, and market five Frank Zappa videos under the Honker Home Video label in the United States, including the rights to manufacture, rent, sublease, advertise, and market copies.
- MPI began distributing several of the videos pursuant to the relationship.
- Years later, Glovaroma contended it discovered MPI had underreported sales and miscalculated royalties and demanded that MPI return Glovaroma materials and stop activity involving the videos and the Honker Home Video mark.
- Glovaroma asserted the relationship was terminated and demanded that MPI destroy (or otherwise relinquish) video inventory; MPI did not comply and continued selling off inventory bearing the Honker Home Video label.
- Glovaroma sued MPI under the Copyright Act and the Lanham Act and also sought an accounting; both sides moved for summary judgment.

## Issues

1. Whether MPI’s continued reproduction and distribution of the Frank Zappa videos constituted copyright infringement, or instead fell within an oral nonexclusive license such that the dispute sounded in contract/royalties rather than infringement.
2. Whether MPI’s continued sale of previously made inventory and continued use of the “Honker Home Video” mark after Glovaroma’s termination demand constituted trademark infringement or false designation of origin.
3. Whether factual disputes about the scope and termination of the oral license, and any post-termination sell-off rights, required denial of summary judgment on liability and on equitable relief such as an accounting.

## Decision

- Plaintiffs’ motion for summary judgment was denied.
- Defendant’s motion for summary judgment was granted in part and denied in part.
- The court ruled that summary judgment for plaintiffs on broad copyright and trademark liability was not available because the record presented material disputes about the terms and duration of the parties’ oral licensing arrangement and the effect of Glovaroma’s attempted termination.
- To the extent Glovaroma sought to treat alleged royalty underreporting and related breaches as automatic infringement, the court limited those theories; uses consistent with a license are not infringement simply because payment disputes exist.
- Claims turning on fact-bound questions—such as what the oral license permitted, whether and when it ended, and whether post-demand sales were authorized sell-off of existing inventory or unauthorized exploitation—remained for further proceedings.

## Legal Principles

- A nonexclusive copyright license can be oral; when a license exists, conduct within its scope is not copyright infringement.
- Failure to pay royalties or accurately report sales ordinarily supports contract remedies and does not itself convert licensed conduct into infringement unless the use exceeds the license or occurs after an effective termination that cuts off authorization.
- Trademark claims based on continued use of a mark by a former authorized distributor require attention to whether the goods sold are genuine, whether the defendant is selling previously authorized inventory, and whether the challenged conduct is likely to confuse consumers about source or current authorization.
- Summary judgment is improper where the parties’ rights depend on disputed facts about an oral agreement’s scope, the parties’ course of dealing, termination, and any allowed disposition of remaining inventory.
- An accounting is a remedy dependent on establishing a viable underlying claim and may be limited or deferred when liability questions cannot be resolved as a matter of law.

## Conclusion

Glovaroma held that the breakdown of an oral video-distribution relationship, including accusations of underreported sales and a termination demand, did not justify summary judgment declaring MPI an infringer across the board; because the parties’ rights depended on disputed facts about license scope, termination, and post-termination inventory sales, the court denied plaintiffs’ summary-judgment motion and granted MPI only partial summary judgment narrowing certain infringement theories.


Glovaroma, Inc. v. Maljack Productions, Inc., 71 F. Supp. 2d 846 (1999)