Petition — Snyder v. L. Batlin & Son, Inc.

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Supreme Court, U. &

;

| JUL 8 1976

Supreme Court of ihe Pniten Baten” ym. CLERK |

Ocroser Term, 1976

N. 7G§-13 4

JEFFREY SNYDER, d/b/a J.S.N.Y.

and ETNA PRODUCTS Co., INC.,

Petitioners,

L. BATLIN & SON, INC.,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

SECOND CIRCUIT

Rosert C. Faser,

Attorney for Petitioner.

OstroLenk, F'aser, Gers & Sorren

260 Madison Avenue

New York, New York 10016

(212) 685-8470

Adams Press Corp., 11 Commerce Street, Newark, N. J. 07102—(201) 623-8611

Oprnions BELow

JURISDICTION ...

TABLE OF CONTENTS

Questions PRESENTED ....

CONSTITUTIONAL PROVISION AND STATUTE ‘

STATEMENT OF THE CASE es o

REASONS FOR GRANTING OF THE Writ oF CERTIORARI ....

I. Summary of Reasons

Ul.

IIT.

The En Banc Decision of the Court of Ap-

peals, Reversing the Initial Court of Ap

peals Decision, Conflicts with a Funda-

mental Tenet of Copyright Law as Laid

Down by Decisions of the Supreme Court

The Decision of the Second Circuit Court

of Appeals is Contrary to the United States

Constitution, to Prior Decisions of the

Second Circuit Court of Appeals and to

Prior Decisions of Other Circuits

The Court Below Performed its Own In-

correct Test of Originality and Came to the

Wrong Conclusion *

The Present Case has Far-Reaching Sig-

nificance in the Copyright Field

VI. The See-Saw History of this Case ...............

CoNncLuUsION

ii TABLE OF CONTENTS

APPENDIX:

A—Opinion of the United States Court of Ap-

peals for the Second Cireuit (En Banc):

(April 12, 1976)

B—Opinion of the United States Court of Ap-

peals for the Second Cireuit (October 24,

1975)

C—Opinion of the United States District Court

for the Southern District of New York (May

12, 1975) “

D—Order of the United States District Court

for the Southern District of New York (May

16, 1975) reninebniety ile

E—Order of the United States Court of Ap-

peals for the Second Cireuit (June 24, 1975)

F—Order of the United States Court of Ap-

peals for the Second Cireuit (July 9, 1975)

G—List of Distinctive Features of Petitioner’s

Copyrighted Work ..

H—List of Additional Precedents ......

I—Selected Issues of BNA’s Patent, Trade-

mark and Copyright Journal ........................--

J—Page from the New York Law Journal, No-

vember 13, 1975 ...... *

K—Opinion of the United States District Court

for the Southern District New York in

Companion Case Etna Products Co., Inc. v.

E. Mishan & Sons ..

PAGE

17a

57a

T4a

76a

TABLE OF CONTENTS lii

PAGE

Cases Cited

Alva Studios, Inc. v. Winninger, 177 F. Supp. 265

(S.D.N.Y. 1959) aeeeeeee- 8, Zl, 22

Amplex Mfg. Co. v. A.B.C. Plastic Fabr. Inc., 184

F. Supp. 285 (E.D. Pa. 1960) 56a

Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99

(2 Cir. 1951)..... ewe

Axelbank v. Rony, 277 F.2d 314 (9 Cir. 1960)... 20

Baker v. Selden, 101 U.S. (1879) n 15

Best Medium Publ. Co. v. National Insider Inc., 385

F.2d 384 (7 Cir. 1967) 56a

Blazon, Inc. v. Deluxe Game Corp., 268 F. Supp. 416

(S.D.N.Y. 1965) ... 20

Bleistein v. Donaldson Lithographing Co., 188 U.S.

239 (1908) ........ 8, 11, 14, 17, 20

Blumcraft of Pittsburgh v. Newman Bros., Inc., 159

USPQ 166 (S.D. Ohio 1968) 56a

Burrow-Giles Litho. Co. v. Sarony, 111 US. 55

(1884) 8

Chautauqua School v. National School, 238 Fed. 151

(2 Cir. 1916) 17

Coneord Fabrics, Inc. v. Generation Mills, Inc., 169

USPQ 470 (S.D.N.Y. 1971) 56a

Covington Fabrics Corp. v. Artel Prod. Inc., 328 F.

Supp. 202 (S.D.N.Y. 1971) 56a

Doran v. Sunset House Dist. Corp., 197 F. Supp. 940

(S.D. Cal. 1961); affd., 304 F.2d 251 (9 Cir. 1962) 21

Dorsey v. Old Surety Life Ins. Co., 98 F.2d 872 (10

Cir. 1938) - “ 17

iv TABLE OF CONTENTS

PAGE

Fred Fisher, Ine. v. Dillingham, 298 Fed. 145

(S.D.N.Y. 1924) ......- 19

Gelles-Widmer Co. v. Milton Bradley Co., 313 F.2d

143 (7 Cir. 1963) 56a

Goldstein v. California, 412 U.S. 546, 561, 93 S. Ct.

2303 (1973) ... sisteslei 17

Henderson v. Tompkins, 60 Fed. 758 (D. Mass. 1894) 15

Imperial Homes Corp. v. Lamont, 458 F.2d 895 (5

Cir, 1972) m ” 16

Dan Kasoff, Inc. v. Novelty Jewelry Co., 309 F.2d

745 (2 Cir. 1962) ....... 56a

Mazer v. Stein, 347 U.S. 201 (1954) ; 12,18

Millworth Conv. Corp. v. _— 276 F.2d 443 (2

Cir. 1960) - 22

Peter Pan Fabrics Inc. v. Acadia Co., 173 F. Supp.

292 (S.D.N.Y. 1959) ............. 56a

Prestige Floral, S.A. v. Calif. Artificial Flower Co.,

201 F. Supp. 287 (S.D.N.Y. 1962) 56a

Puddu v. Buonamici Statuary, Inc., 450 F.2d 401 (2

Cir. 1971) - - 17

Roth Greeting Cards v. United Card Co., 429 F.2d

1106 (9 Cir. 1970) 56a

Royalty Designs, Inc. v. Thrifticheck Serv. Corp . 204

F. Supp. 702 (S.D.N.Y. 1962) 56a

Rushton v. Vitale, 218 F.2d 434 (2 Cir. 1955) _......... 56a

Scarves by Vera, Inc. v. United Merchants, 173 F.

Supp. 625 (S.D.N.Y. 1959) ... = - 56a

T'rebonik v. Grossman Music Corp., 305 F. Supp. 339

(N.D. Ohio, 1969) 56a

TABLE OF CONTENTS Vv

PAGE

Trifari, Krussman & Fishel, Inc. v. Charel Co., 134

F. Supp. 551 (S.D.N.Y. 1955) 56a

Wihtol v. Wells, 231 F.2d 550 (7 Cir. 1956) 2000... 56a

Ziegelheim v. Flohr, 119 F. Supp. 324 (E.D.N-Y.

1954) _-. 56a

United States Constitution Cited

United States Constitution, Article I, Section 8,

Clause 8 4,9

Statutes Cited

62 Stat. 928 (1948):

28 U.S.C., Section 1254(1) 3

Section 1338 +

Section 2201 4

Section 2202 4

The Copyright Act, 61 Stat. 652 (1947):

17 U.S.C., Section 5 4,14

Section 11 11

Section 13 11

Section 106 7

Section 108

Section 109 .... 7

Section 209 11

Design Protection Act of 1975, S.22, 94th Cong., 2d

Sess. (1976) 13

vi TABLE OF CONTENTS

PAGE

, , ; :

Design Protection Act of 1975, 8.22 in the House o

Representatives, 94th Cong., 2d Sess. (1976) ......... 13

The Patent Act, 66 Stat. 797 (1952):

35 U.S.C., Section 102 12

Section 108 .... 12

Other Authorities Cited

Copinger and Skone James, Copyright (Sweet and

Maxwell, London, 1965), p. 49, See. 119 19

BNA’s Patent, Trademark and Copyright Journal,

Issue No. 231, June 5, 1975 58a

Issue No. 253, November 13, 1975 62a

Issue No. 276, April 29, 1976 69a

New York Law Journal,

Vol. 175, No. 93, November 13, 1975 75a

IN THE

Supreme Court of the United States

Octoser Term, 1976

No.

JEFFREY SNYDER, d/b/a J.S.N.Y.

and ETNA PRODUCTS CO., INC.,

Petitioners,

L. BATLIN & SON, INC.,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

SECOND CIRCUIT

Petitioners, Jeffrey Snyder and Etna Products Co., Inc.,

respectfully pray that a Writ of Certiorari issue to re-

view the Judgment and Opinion of the United States

Court of Appeals for the Second Circuit entered in this

proceeding on April 12, 1976.

Opinions Below

The Majerity and Dissenting Opinions of the Second

Cireuit Court of Appeals, sitting en banc, are reported at

F.2d , 189 USPQ 753 (2 Cir. April 12, 1976)

and are found at Appendix A hereto. The aforsesaid

Majority Decision was a reversal of a previous Decision

by a three judge panel of the Second Cireuit Court of

Appeals, in which there were also Majority and ae

ing Opinions. These Opinions are reported at F.2d

, 187 USPQ 721 (2 Cir. October 24, 1975), and are

found at Appendix B hereto. The earlier Majority Deci-

sion of the Court of Appeals was, in turn, a reversal of

the Decision of the United States District Court for the

Southern District of New York, contained in an Opinion

reported at 394 F. Supp. 1389, 187 USPQ 91 (S.D.N.LY.

May 12, 1975) and found at Appendix C hereto. The

Order of the District Court, pursuant to its Opinion and

from which t';e Appeal was taken to the Court of Appeals,

entered May 16, 1975, is not reported and is found at

Appendix D hereto’.

In addition, the United States Court of Appeals for the

Seeond Circuit on June 24, 1975 Ordered a Stay of the

Order of the United States District Court for the South-

ern District of New York that had heen entered May 16,

1975. This Stay Order of the Court of Appeals is un-

published. A copy of the Stay Order of the Court of

Appeals is found at Appendix FE hereto. The United

States Court of Appeals for the Second Cireuit on July

9, 1975 issued an Order Dissolving the Stay that had been

* An opinion in the companion case, Etna Products Co. v. E. Mis-

han & Sons, 75 Civ. 428 (S.D.N.Y. February 13, 1975) is unre-

ported and is found at Appendix K hereto.

granted by that same Court on June 24, 1975. This Order

is also unpublished. A copy of this Order is found at

Appendix F.

Jurisdiction

The judgment of the United States Court of Appeals

for the Second Circuit was entered on April 12, 1976.

This judgment followed a rehearing en banc of an earlier

decision of the same Court of Appeals. This Petition for

Certiorari is being filed within ninety days of the final

judgment of the Court of Appeals for the Second Circuit.

The jurisdiction of this Court is invoked under 62 Stat.

928, 28 U.S.C., See. 1254(1) (1948).

Questions Presented

1. Is there a standard of “true artistic skill” for deter-

mining originality of a copyrighted work?

2. May a judge of the United States District Court or

of the United States Court of Appeals assess the artistic

merit of a work to determine if it has sufficient originality

to be copyrightable?

3. Where a skilled artist and designer uses a three-

dimensional work in the public domain as his inspiration

in the creation of a new sculpture and where there is con-

siderable skilled artistic effort in the new sculpture and

where numerous features of the new sculpture differ from

the public domain work, may a Court determine that such

new sculpture does not have sufficient originality to be a

copyrightable work?

4. Is petitioner’s three-dimensional work “original”

within the meaning of that term as required for that work

to be copyrightable?

Constitutional Provision and Statute

The United States Constitution, Article 1, Section 8,

Clause 8:

“To Promote the Progress of Science and useful

Arts, by securing for limited Times to Authors and

Inventors the exclusive Right to their respective

Wrightings and Discoveries.”

(1947) :

“The application for registration shall specify to

which of the following classes the work in which

“(¢) Works of art; models or designs for works

of art;

“(h) Reproductions of a work of art...

“The above specifications shall not be held to

limit the subject matter of copyright as defined in

section 4 of this title nor shall any error in classi-

fication invalidate or impair the copyright protec-

tion secured under this title.”

Statement of the Case

In this action, Respondent is seeking inter alia, a Dec-

laration as to the invalidity of Petitioner’s copyright.

Jurisdiction over this action in the Federal Courts is

predicated upon 62 Stat. 928, 28 U.S.C. Sections 2201, 2202

and 1338 (1948).

Cast metal savings banks incorporating an Uncle Sam

figure standing atop a decorated, box-like platform have

long been in the public domain. A typical example of the

prior metal Uncle Sam bank is in evidence in this pro-

ceeding as physical Exhibit 1.

Petitioner Etna Products Co., Ine. is engaged in the

business of im, orting and selling novelty items such as

the Uncle Sam bank. Jeffrey Snyder is an officer of Etna

and commissions the design and sculpting of novelty items

which Etna thereafter markets. In January, 1974, Jeff-

rey Snyder saw one version of an 11 inch high metal

Uncle Sam bank. As the item appeared quite timely for

marketing in connection with the U.S. Bicentennial, Jef-

frey Snyder purchased it.

In April, 1974, while Jeffrey Snyder was in Hong Kong,

he asked his Hong Kong buying agent whether it could

design and produce a new plastic Uncle Sam bank for

him, inspired by the metal bank. A skilled designer and

mold maker in Hong Kong was selected by the buying

agent. Then (a) sketches were made during a confereiice

among Jeffrey Snyder, his buying agent and the designer

of a proposed reduced size, plastic material Uncle Sam

bank, that was to be inspired by the antique metal Uncle

Sam bank. (b) A 10 inch high cle y model of the proposed

article was thereafter sculpted. (c) During a later meet-

ing, Jeffrey Snyder, the buying agent and the mold maker

decided to further modify the design and to further re-

duce the height of the model to 9 inches. (d) A 9 inch tall

prototype was accordingly sculpted. (e) After Jeffrey

Snyder approved the prototype, its design was utilized

for preparation of the mold employed in the production

of Snyder’s eventually copyrighted, commercial work. An

example of the copyrighted plastic bank is in evidence as

ixhibit 2 herein.

Both of Respondent Batlin’s expert witness (at the

Appendix in the Court of Appeals p. 65, li. 5-p. 66, li. 8)

and Petitioner Snyder’s expert witness, (at the Appendix

in the Court of Appeals pp. 92-95; p. 103, li. 22 p. 104, li.

11) testified that sculpting steps were necessary to pro-

duce Snyder’s plastic bank and that a trained a~tist and

sculptor had to have spent considerable time in designing

and sculpting Snyder’s bank".

Because of the several design and sculpting stages

through which Snyder’s bank passed between the initial

cast metal Uncle Sam bank and the final plastic version,

because it was an artist or sculptor who performed the

various stages in the creative process and his individual

artistic judgments went into his contribution and, most

important, because a new work was being created, numer-

ous changes in the shape and appearance of the plastic

Uncle Sam bank, as compared with the previous metal

bank, necessarily resulted. (A description of those differ-

ences may be found in Appendix G and a brief summary

may be found in the Dissenting Opinion in the Court of

Appeals (Appendix A) at p. 15a.)

This action proceeded through the following stages. Fol-

lowing publication of his copyrighted work, Snyder reg-

istered his version of the Uncle Sam bank by deposit with

the Register of “Copyrights. In early February, 1975,

* Petitioner’s Expert’s Testimony, the Appendix in the Court of

Appeals, p. 104, li. 3-11:

“Q. Would you say that it took him hours of work in front

of the original to produce the copy? What would you esti-

mate as to how long it would take you?

A. It depends on the artist.

Q. How long would it take you to do that?

A. About a day and a half, two days work.

QO. How would you rate that—would that be an easier piece

than you worked on or a more difficult piece?

A. I would put it in between medium and difficult.”

Snyder initiated administrative proceedings to record the

Uncle Sam bank copyright registration with the United

States Customs Service to bar importation of infringing

plastic Uncle Sam banks in accordance with the provisions

of the Copyright Act, Sees. 106, 108, 109, 61 Stat. 652, 17

U.S.C., See. 106, 108, 109 (1947). An Order precluding

such importations was promulgated by the Customs Serv-

ice in April, 1975. This action was initiated in the United

States District Court by Respondent Batlin in an effort

to obtain a Declaratory Judgment of the invalidity and

unenforceability of Petitioner Snyder’s copyright.

On May 2, 1975 the U.S. District Court for the South-

ern District of New York issued a Temporary Restrain-

ing Order to restrain the Customs Service and Snyder

from enforcing the importation exclusion Order, pending

determination of Batlin’s Motion for Preliminary Injunc-

tion. After a hearing on May 6, 1975, the District Court

granted a Preliminary Injunction which mandated that

Petitioners Snyder and Etna Products Co., Ine. be en-

joined, pendente lite, “from asserting . . . any alleged

rights in...” the copyright here in issue, and affirma-

tively compelled them to cancel “the recordation .. . [of

the copyright registration] with the United States Cus-

toms Service” (Appendix D).

There next followed a Stay of the Injunction issued

by the Court of Appeals for the Second Cireuit (Appendix

E), and a later dissolution of that Stay by the same

Court (Appendix F).

On October 24, 1975, the Court of Appeals for the

Second Cireuit, by a Majority Decision, found that the

Snyder Uncle Sam bank had at least the minimal orig-

inality required for a copyrightable work (Appendix B).

Batlin then moved the Second Circuit Court of Appeals

for a Rehearing En Banc. The Court granted the rehear-

ing. In another Majority Decision, the Court of Appeals

reversed its own previous decision and affirmed the deci-

sion of the District Court and held Snyder’s work to be

uncopyrightable (Appendix A). The Court found that

Snyder’s bank lacked “originality”, and in doing this, the

Court asserted a new test of copyrightability: “A con-

siderably higher degree of skill is required, true artistte

skill to make the reproduction copyrightable.”

REASONS FOR GRANTING OF THE WRIT OF

CERTIORARI

I. Summary of Reasons.

It is a basic tenet of copyright law that taste forms

no part of copyrightability and that a work that embodies

any artistic contribution by an author has that degree of

originality required for copyright. Burrows-Giles Litho.

Co. v. Sarony, 111 U.S. 53, 58 (1884). However, the See-

ond Cireuit Court of Appeals has ignored the innumerable

precedents to the foregoing effect and has imposed a re-

quirement of “A considerably higher degree of skill...

true artistic skill” as being required for a work to be

copyrightable (Appendix A, p. 10a). This is a dra-

matic change in the copyright law, for the first time im-

posing a requirement that the Copyright Office and judges

and juries who are determining copyrightability make a

subjective determination of the level of the author’s skill

and artistic input. The Supreme Court, per Justice Holmes,

warned long ago that judges should not, and the copyright

law says they must not, engage in such artistic assess-

ments. Bleistein v. Donaldson Litho. Co., 188 U.S. 239,

251 (1903).

A very large proportion of reported copyright prece-

dents are Second Cireuit Court of Appeals Opinions,

whereby decisions of that Circuit have guided and shaped

U.S. copyright iaw. Also, the split decision by the Sec-

ond Cireuit Court of Appeals in the present case, having

been en banc, will receive even greater weight for stare

decisis purposes. This Appeal has already been head-

lined in a number of legal publications directed to the

general lawyer and the copyright specialist. It is a highly

significant case in its field and warrants consideration

in the Supreme Court. The Supreme Court should ecor-

rect the Court of Appeals’ erroneous statement of copy-

right law or else every artist’s work on which copyright

is claimed will have to be judged on artistic merit.

The developments in this case show that clarification of

the copyrightability question is warranted here. Follow-

ing the initial decision of the District Court, there have

been four decisions of the Court of Appeals and every

one of these has been a reversal of the previous decision,

whereby there have been four reversals. Surely, such

doubt as to the wisdom of the Court of Appeals’ decision

must remain as to warrant this Court granting Cer-

tiorari.

II. The en banc Decision of the Court of Appeals,

reversing the initial Court of Appeals Decision,

conflicts with a fundamental tenet of Copyright

Law as laid down by Decisions of the Supreme

Court.

Basie in our copyright system is that matters of “taste”

or degrees of “artistry” form no part of copyrightable

originality. That principle has its foundation in the

8, Clause 8, as interpreted in decisions of the Supreme

Court and the other Federal Courts. The Decision by the

Second Cireuit Court of Appeals will, if permitted to

stand, dramatically alter that fundamental principle of

our copyright system.

The Court of Appeals Opinion states:

“Nor can the requirement of originality be satisfied

simply by the demonstration of ‘physical skill’ or

‘special training’ which, to be sure, Judge Metzner

found was required for the production of the plas-

tic molds that furnished the basis for appellants’

plastic bank. A considerably higher degree of skill

is required, true artistic skill, to make the repro-

duction copyrightable.” (Appendix A, p. 10a)

Query—What is “true artistic skill”? And by whose

standards?) In an Opinion of this Court, per Justice

Holmes:

“Tt would be a dangerous undertaking for persons

trained only to the law to constitute themselves

final judges of the worth of pictorial illustrations,

outside of the narrowest and most obvious limits.

At the one extreme some works of genius would

be sure to miss appreciation .. . At the other end,

pealed to a public less educated than the judge.

Yet if they command the interest of any public,

they have a commercial value—it would be bold to

say that they have not an aesthetic and educational

value—and the taste of any public is not be to

treated with contempt. It is an ultimate fact for

the moment, whatever may be our hopes for a

change. That these pictures had their worth and

their success is sufficiently shown by the desire to

reproduce them without regard to the plaintiffs’

rights. See Henderson v. Tompkins, 60 Fed. Rep.

758, 765. We are of the opinion that there was evi-

dence that the plaintiffs have rights entitled to the

protection of the law.”

Bleistein v. Donaldson Lithographing Co., 188

U.S. 239, 251 (1903) :

There has never been a standard of “true artistic skill”

to be found anywhere in our copyright laws, that is, not

until the Opinion of the Court below. The insertion of

such a standard would subject all copyrights to the arbi-

trary taste of those Judges before whom an issue of copy-

right validity was pending. It would effectively abolish

the present objective registration* system in favor of a

highly subjective evaluation system which was not con-

templated in the Copyright Act**. The Court of Appeals

Decision, if permitted to stand, will accomplish precisely

what the Supreme Court cautioned against in Bleistein

v. Donaldson Lithographing Co., 188 U.S. 239 (1903).

* The Copyright Act, Sections 11, 13, 209, 61 St

Sections 11, 13, 209 (1947). ee

+e Because the Copyright Office registers copyrights and does not

examine their originality, please contemplate the following fictitious

judicial colloquy, necessitated by the Decision below:

Court of Appeals Judge A: Doesn’t this plastic Uncle Sam show

a high degree of artistic skill ?

Judge B: No, maybe if there were two more stars on his hat.

Judge C: At least an additional character, like a dog, or a totally

new posture for the man is the minimum change needed for me to

find true artistic skill.

1 Judge A: I think there is enough skill.

Decision: 2-1 against copyrightability.

The Court below requires that apt paren | rn

upon satisfying that Court’s criterion of a sufficien nd a

degree of skill, i.e. true artistic skill. It also insis he 0 zs

“an original contribution” having “at least ss

tial variation”, even in a reproduction, which is, by de

tion, a copy of a work in the public domain.

The Court below (at Appendix A, p. 12a) has aoe.

preted Mazer v. Stein, 347 U.S. 201, eS “—

the Supreme Court stated that reproductions, to ar

rightable, “must be original, that is, the author’s —

expression of his ideas”. The Court below has a

that into a requirement for originality in the poe at

the production itself constitute a “substantial a oa

or departure from the underlying work. om, 3 3 is i

sentially a requirement for novelty. pee erg ”

copyrights is tied to the concept of authorship _ _

to the nature or quality or novelty of the wor bce ,

Unfortunately, confusion often arises because of t abies

tirely different meaning “originality” has in our : S

laws and the tendency to lump copyrights and agen

into the same ball and call it “intellectual property law.

At the outset, it will be appreciated that copyrights

not convey a monopoly in the same sense as patents.

facturing or marketing similar products. Indeed, so _

as a given product or object can trace its origin to a dil-

ferent “author” or creator, the copyright holder has -

say in the marketplace whatever. Thus, there is simply

no need for the relatively stringent requirements for orig-

inality in terms of the product or work itself which we

refer to in the patent laws as novelty and unobviousness*”.

* See the next section hereof.

** The Patent Act, Sections 102, 103, 66 Stat. 797, 35 U.S.C., Sec-

tions 102, 103 (1952).

The Opinion of the Court below reveals its dissatisfaction

with the plastic Uncle Sam bank because it is not novel

in view of the antique metal bank. Therefore, the Court

below concluded the plastic bank is not “original.”

Moreover, with all due respect to the assessment by the

Second Circuit Court of Appeals, the artistic talent of

Snyder’s Hong Kong designer is irrelevant. It is suffi-

cient that he exercised his own personal skill, within his

capabilities, to achieve that which represents his personal

expression of the antique metal Uncle Sam bank. His

reproduction reflects his original work, i.e. in the sense

that he is its “author” or creator or parent. As a repro-

duction under the copyright statutes it need not satisfy

an arbitor’s palate for “true artistic skill” nor need it

possess “at least some substantial variation.”

The Senate has passed a general revision of the Copy-

right Law, known as the Design Protection Act of 1975,

S. 22, 94th Cong., 2nd Sess. (1976). The House of Rep-

resentatives is considering the enacted Senate Bill as S. 22

in the House of Representatives, 94th Cong., 2nd Sess.

(1976). Although certain changes are enacted, the Bill

also serves to codify existing case law. It is of interest

to note that that Bill never defines or redefines originality,

for that term has for so long meant copyright author-

ship. This is a reflection of the current state of the law,

as derived from over a century of case law. Nowhere

does the Bill require the copyrighted work to constitute

a novel idea or a discovery or to have high artistic merit.

Thus, a decision by this Court in case will not be

changed by or affected by statutory changes.

It is essential to the future of our copyright system for

the Supreme Court to decide by what standard we shall

measure copyrightability—that of the Second Cireuit now

imposing a subjective test of “true artistic skill” coupled

a ee oe

with a revised standard for originality cloaked ” ogee

law type novelty requirements (substantial varia se

that of a virtually endless line of precedents , ew og . .

simply that the reproduced object reflect its author : =

sonal expression or handicraft and, thus, be evigns =

him, even though it may represent but a | m ~

grade of art.” Bieistei v. Donaldson Lithograp ing a

188 U.S. 239 (1911). See the Dissenting Opinion in

Court of Appeals in the present case (Appendix A), par-

ticularly at p. 16a.

Ill. The Decision of the Second Circuit Court of Ap-

peals is contrary to the United States Constitu-

tion, to prior Decisions of the Second Circuit

Court of Appeals and to prior Decisions of other

Circuits.

in i r istered pur-

The copyright in issue in this case was regi

suant to the Copyright Act, Section 9, 61 Stat. 652, nd

U.S.C., Section 5 (1947). Congress enacted that —s

parsuant to the purpose set forth in Article I, Section

of the Constitution:

“To Promote the Progress of . Science and ge

Arts, by securing for limited Times to Authors an

Inventors the exclusive Right to their respective

Writings and Discoveries.”

Thus, as noted by the Court in Alfred Bell & Co. v.

Catalda Fine Arts, 191 F.2d 99, 100 (2nd Cir. 1951) rr

the verv language of the Constitution es wa

ir ‘writings’ b) ‘inventors’ an

‘authors’ and their ‘writings from ( |

their ‘disecoveries’.” The Court in Alfred Bell & Co. v.

* See the next section hereof.

ee ee ee

Catalda Fine Arts quoted with approval the following

statement from Henderson v. Tompkins, 60 Fed. 758, 764

(D. Mass. 1894):

“There is a very broad distinction between what is

implied in the word ‘author’, found in the consti-

tution, and the word ‘inventor.’ The latter carries

an implication which excludes the results of only

ordinary skill, while nothing of this is necessarily

involved in the former.”

The Court in Alfred Bell & Co., supra, further dis-

tinguished between the limits of protection accorded a

patent owner stating, 191 F.2d, at 103:

“Correlative with the greater immunity of a pat-

entee is the doctrine of anticipation which does not

apply to copyrights: The alleged inventor is charge-

able with full knowledge of all the prior art, al-

though in fact he may be utterly ignorant of it. The

‘author’ is entitled to a copyright if he independ-

ently contrived a work completely identical with

what went before; similarly, although he obtains a

valid copyright, he has no right to prevent another

from publishing a work identical with his, if not

copied from his.” [Emphasis added]

The concept of originality within the context of the Copy-

right Laws stems from and is equivalent to “authorship”

unlike the Patent Laws where originality is related to

“inventorship”. Alfred Bell & Co. v. Catalda Fine Arts,

supra.

In Baker v. Selden, 101 U.S. 99 (1879), for example,

this Court stated at p. 102:

“The novelty of the art or things described or ex-

plained has nothing to do with the validity of the

In Imperial Homes Corporation v. Lamont, 458 F.2d

895 (5 Cir. 1972), the Court dealt with architectural draw-

ings for a residence, which drawings were reproduced

from a copyrighted set of architectural drawings in a

builder’s advertising brochure. In upholding the en-

forceability of the copyrighted drawings, the Court said:

“In Burrow-Giles Lithographing Co. v. Sarony,

111 U.S. 53, 58, 4 S.Ct. 279, 28 L.Ed. 348 (1884)

‘an author’ was defined as ‘he to whom anything

owes its origin; originator, maker; one who com-

pletes a work of science or literature.’ Hence, the

architect who originates a set of blueprints for a

dwelling is as much an author for copyright pur-

poses as the writer who creates an original novel

or the dramatist who pens a new play. This author-

ship concept is no more than one facet of the es-

sence of that which merits copyright protection—

originality. However, while such originality is the

test for copyrightability, it does not extend so far

as to require that novelty or invention, which is

the sine qua non for patent protection be present.”

The fact that the second copy is virtually identical to

the first copy is irrelevant as long as it expresses the per-

sonal reaction of the second author to the original:

“The copy is the personal reaction of an individual

upon nature. Personality always contains some-

thing unique. It expresses its singularity even in

handwriting, and a very modest grade of art has in

it something irreducible which is one man’s alone.

That something he may copyright unless there is a

a a

- ts AOR OO! 20 ome

restriction in the words of the act.” Bleistein vy

Donaldson Lithographing Co., 188 U.S. 239, 250

(1903) [Emphasis supplied]

In Chautauqua School vy. National School

(2 Cir. 1916), at page 151: chool, 238 Fed. 151

_ “Works alike may be original. It is not essen-

tial that any production, to be original or new with-

in the meaning of the law of copyright, shall be

different from another. Whether the composition

for which copyright is claimed is the same as or

different from, or whether it is like or unlike, an

existing one, are matters of which the law takes

no cognizance, except to determine whether the pro-

duction is the result of independent labor or of

copying. Two or more authors may write on the

same subject, treat it similarly, and use the same

common materials in like manner or for one pur-

pose.”

The Courts have always found sufficient basi -

rightability in virtually any work created by o> aan

own skill, labor and judgment. See Goldstein v. Cali-

forma, 412 U.S. 546, 561 (1973). Dorsey v. Old Surety

Life Ins. Co., 98 F.2d 872, 873 (10 Cir. 1938).

Statuettes of elves (which are like i

plastic Uncle Sam

banks) were held to be copyrightable by the Second Cir-

cuit Court of Appeals in Puddu v. Buonamici Statuary

Inc., 450 F.2d 401 (2 Cir. 1971). The Court, in reversing

the District Judge, observed:

“Judge Tyler considered that the copyrighted

statuettes were not sufficiently different from a

1963 uncopyrighted line as to possess the original-

ity required for a copyright... .

“However, originality has been considered to

mean ‘only that the work owes its origin to the

author, i.e. is independently created and not copied

from other works.’ [Citation deleted] P!aintiff’s

employee, Metcalf testified without contradiction

that he had sculpted all the copyrighted statuettes

‘from scratch’. While there is a strong family re-

semblance between the copyrighted and the uncopy-

righted models, the differences suffice to satisfy the

modest requirement of originality laid down by the

Supreme Court in Bleistem v. Donaldson Itth. Co.,

188 U.S. 239 (1903) and by this Court in Alfred

Bell & Co. vy. Catalda Fine Arts, Inc., 191 F.2d 99 (2

Cir. 1951) . . . [450 F.2d at 402; Emphasis sup-

plied]

Originality requires no more than the input of the

author’s personal effort, skill and judgment.

In Alva Studios, Inc. v. Winninger, 177 F. Supp. 265

(S.D.N.Y. 1959), the famous Rodin seulpture “Hand of

God” was reproduced precisely by the copyright pro-

prietor on an approximate one-half seale. The names,

dates, size differences and other factual features of the

present case could be directly substituted for those in

Alva Studios. To quote the Alva Court at 177 F. Supp.,

p. 265:

“Tt is hornbook that a new and original plan or

combination of existing materials in the public do-

main is sufficiently original to come within the copy-

right protection [Citation]. However, to be en-

titled to copyright, the work must be original in

the sense that the author has created it by his own

skill, labor and judgment without directly copying

or evasively imitating the work of another [Cita-

tion].

That “original” in connection with copyrights relates to

the source and not to the quality or novelty of the work

is also shown in an English commentary on copyrights*:

“The meaning of the word ‘original’ in the Act of

1911 was discussed in a judgment .. . which sas

frequently been cited with approval in subsequent

cases...

“The word ‘original’ does not in this connection

mean that the work must be the expression of orig-

inal or inventive thought. Copyright Acts are not

concerned with the originality of ideas, but with

the expression of thought in print or writing. The

originality which is required relates to the ex-

pression of the thought. But the Act does not re-

quire that the expression must be in an original

or novel form, but that the work must not be copied

from another work—that it should originate from

the author.

“ .. and it is fairly clear, in the realm of artistic

works, that any change of medium will entitle a

reproduction of an existing artistic work to inde-

pendent protection.”

The error in the thinking of the Court below is seen

from Mazer v. Stein, 347 U.S. 201 (1954), wherein the

Supreme Court cited, with approval, Fred Fisher, Inc. v.

Dillingham, 298 Fed. 145, 151 (S.D.N.Y. 1929). In Fisher,

two men, each of whom made identical maps of the same

territory, were permitted to copyright their particular

versions simply because each map was “original” to its

particular author although otherwise indistinguishable.

* Copinger and Skone James, Copyright (Sweet & Maxwell, Lon-

don, 1965), p. 49, Sec. 119.

Any individual is free to ‘make ‘is own copy or repro-

duction. So long as he is the creator of that work, in

the sense that it reflects his own personal expression of

an object or idea, then it is his original work. As stated

in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239

(1903): “Others are free to copy the original. They are

not free to copy the copy.”

Here, in the Uncle Sam bank ease, designers made

sketches and from those sketches a first clay model was

sculpted, and then a prototype was sculpted and from that

sculpted prototype a final mold was made for production

purposes. Others were and are free to go through the

same or any other process whereby they might repro-

duce the antique metal Uncle Sam bank. But they are

not free to copy Snyder’s copy.

That the original from which the copyrighted work

was taken is in the public domain does not defeat its

originality or copyrightability.

In Azxelbank v. Rony, 277 F.2d 314 (9 Cir. 1960), where

documentary films which were in the public domain were

reproduced in a different sequence together with a running

commentary, the Court said:

“Of course, just because the source of the material

is in the public domain does not void a copyright,

but rather the protection is limited to the new and

original contribution of the author.” (429 F.2d at

p. 317)

In Blazon, Inc. v. Deluxe Game Corp., 268 F. Supp. 416,

421, 422 (S.D.N.Y. 1965), the Court stated:

“The fact that plaintiff took a matter admittédly

in the public domain, (i.e. a horse) does not in and

of itself preclude a finding of originality, since

plaintiff may have added unique features to the

horse, enlarged it and made it sufficiently dissimilar

from defendant’s horse as to render it copyrightable

to plaintiff.”

In Alva Studios, Inc. v. Winninger, 177 F. Supp. 265

(S.D.N.Y. 1959), the Court held that a reproduction of

Rodin’s “Hand of God” in a smaller size was copyright-

able. Although the original was well known and in the

public domain, the Court observed:

“one work does not violate the copyright in another

simply because there is similarity between the two,

if the similarity between the two results from the

fact that both deal with the same subject or have

the same source.”

Once more, the Court reflected the fact that the true cri-

terion for originality was whether the work reflected the

author’s independent eorts and skill. How close his

likeness bore to the original was simply not the consid-

eration.

In Doran v. Sunset House Dist. Corp., 197 F. Supp.

940, 944 (S.D. Cal. 1961) ; affd., 304 F.2d 251 (9 Cir. 1962),

a copyright on a Santa Claus figure was held valid. In

Doran, for example the Court recognized that the copy-

righted work incorporated the familiar public domain ele-

ments of the Santa Claus figure finding, nevertheless,

that:

“Here, plaintiffs first envisioned and then created

by their own skill, labor and judgment, a Santa

Claus in the form of a three-dimensional figure

made of plastic. It is true, of course, that plain-

tiffs’ Santa has all of the traditional features which

go to make up Santa Claus, viz., the red suit and

cap with white fur trim, the white hair and beard,

the black belt and boots, the ruddy face and fat

form. These features are part and parcel of the

‘idea’ of Santa Claus and hence are not copyright-

able. However, the originality here lies in the form

—three-dimentional—and the medium—plastic—

which plaintiffs have used to express the idea of

Santa Claus”.

Further authorities noting the measure by which orig-

inality is determined are cited in Appendix H.

IV. The Court below performed its own incorrect

test of originality and came to the wrong con-

clusion.

In its Opinion in the present case, the Court below dis-

cusses Millworth Converting Corp. v. Slifta, 276 F.2d 443

(2nd Cir. 1960) and notes that the fabric designed in

Millworth required one month of work. The Court down-

grades the skill of Snyder’s work by commenting at Ap-

pendix A, p. 10a: “Here on the basis of appellant’s own

expert testimony it took the Unitoy representative ‘about

a day and a half, two days work’ ‘to produce the plastic

mold seulpture from the metal Uncle Sam bank.” No-

where in the copyright law is there a requirement for the

expenditure of a minimum amount of time to qualify for

The Court below also discusses Alva Studios Inc. v.

Winninger, 177 F. Supp. 265 (S.D.N.Y. 1959) in the Opin-

ion below, Appendix A, at p. lla:

“where the Court [in Alva] held that ‘great skill

and originality [were required] to produce a scale

reduction of a great work with exactitude ... the

original sculpture was ‘one of the most intricate

pieces of sculpture ever created’ with ‘[i]nnum-

erable planes, lines and geometric patterns . . . in-

terdependent in [a] multidimensional work’. Orig-

inality was found by the District Court to consist

primarily in the fact that ‘it takes “an extremely

skilled sculptor” many hours working directly in

front of the original’ to effectuate a scale reduc-

tion . . . the complexity and exactitude there in-

volved distinguishes that case amply from the one

at bar”. [Emphasis added]

The Court below admitted there was artistic skill and

effort involved in producing Snyder’s plastic bank, but

the Court found the quantity of such skill insufficient.

The originality of Snyder’s work was not recognized. At

Appendix A, p. lla, the Court below said:

“Tf there be a point in the copyright law pertaining

to reproductions at which sheer artistic skill and

effort can act as a substitute for the requirement

of substantial variation, it was not reached here.”

A simple comparison of the two statues involved here,

the metal and plastic banks, show that Petitioner Sny-

der’s work was not a mere slavish imitation, but a new

work created with great care for detail and considerable

artistic skill over a time period which, for many works

of art, is quite substantial.

The Court of Appeals had no basis for measuring orig-

inality on the false standards of its personal view of what

constitutes “artistic skill” or how much time should be

devoted to a work or whether that work constitutes a “sub-

stantial variation”.

V. The present case has far-reaching significance in

the copyright field.

As even a casual perusal of reported cases on copy-

rights found in Modern Federal Practice Digest under

the topic Copyrights or in the United States Patents

Quarterly Index under the heading Copyrights show, a

disproportionately large proportion of reported copyright

precedents are Opinions of the Second Circuit Court of

Appeals ard the District Courts in the Second Circuit.

Necessarily, the decisions of that Cireuit in the copyright

field carry great weight. The unfortunately incorrect

decision in the present case will, unless corrected by this

Court, also have great weight as a precedent. In addi-

tion, the decision for which review is now being sought

was rendered en banc which gives that decision even

greater impact, despite the fact that the decision was by

a divided court and a cogent dissent was written.

The Bureau of National Affairs, Inc., the well known

publisher of newsletters in various branches of law, pub-

lishes the weekly “BNA’s Patent, Trademark and Copy-

right Journal” to which, it is believed, numerous practi-

tioners in the copyright field subscribe. The present case

has been digested in this Journal. As the case has moved

through its various stages, it has been discussed until the

report of the split decision of the Second Circuit, sitting

en banc, was headlined as the premier highlight in the

issue of April 29, 1976 of that publication.*

In addition, for all practitioners in the New York City

area, there is a daily publication, “New York Law Jour-

nal”, which each day headlines an opinion, usually from

* In Appendix I appear copies of the pertinent pages of the BNA

Journal in which the case is mentioned.

a court in the New York area, which is felt to have par-

ticular significance. In the issue of November 13, 1975,

the opinion of the three-judge panel in this case was

singled out for such treatment by the New York ' aw

Journal (Appendix J).

The present case is an important one. The erroneous

decision and misstatement of copyright law by the Court

below should be reviewed and corrected by this Court.

VI. The see-saw history of this case.

Following the original District Court decision in this

case, the Court of Appeals for the Second Circuit has

reviewed and rendered some decision or taken some ac-

tion in connection with this case on four occasions. On

every such occasion, the Court either expressly reversed

or made a decision contrary to the prior decision. Fol-

lowing the District Court Order (Appendix D) enjoining

enforcement of the copyright through the Customs Serv-

ice, the Court of Appeals stayed enforcement of the Order

of the District Court (Appendix FE). Following this, the

Court of Appeals reversed itself and dissolved the stay

(Appendix F). Following this, the Court of Appeals

made a contrary decision, again ordering that the Injune-

tion against enforcement of the copyright be lifted (Ap-

pendix B). Following this, upon rehearing, the Court of

Appeals again reversed itself and affirmed the grant of

the Injunction by the District Court (Appendix A). In

the two reported decisions of the Court of Appeals (Ap-

pendices A and B), the Panel was split, with strong ma-

jority and dissenting opinions being written both times.

With so many reversals, and no definitive unanimous

decision, coupled with the strong dissent, the Court’s

decision resulting from the hearing en banc carries the

seeds of its own subsequent reversal, overruling or being

distinguished by a decision in the same or another Cir-

cuit if the same issue is raised again. There is need for

a definitive decision on this important point of copyright

law and there is need for correction of the erroneous de-

cision of the Court of Appeals. This Court should issue

the requested Writ of Certiorari.

CONCLUSION

For the reasons stated, it is respectfully requested

that this Petition for a Writ of Certiorari should be

granted to review the Judgment and Opinion below

of the United States Court of Appeals for the Second

Circuit in this matter.

Respectfully submitted,

Rosert C. Faser,

Attorney for Petitioner.

OsTROLENK, Faser, Gers & Sorren

260 Madison Avenue

New York, New York 10016

(212) 685-8470

eee — ate eee

APPENDIX A

Opinion of the United States Court of Appeals for the

Second Circuit (En Banc) (April 12, 1976)

UNITED STATES COURT OF APPEALS

For tuz Secoxy» Circuit

No. 1249—September Term, 1975.

(Submitted January 19, 1976 Decided April 12, 1976.)

En Banc

Docket No. 75-7308

L. Batu & Son, Inc.,

Appellee,

JEFFREY Snyper d/b/a J.S.N.Y. and

Erna Propucts Co., Inc.,

Appellants.

Before:

Kaurman, Chief Judge, and Fernserc, MaNnsFIzeLp,

Muuuican, Oakes, Trmpers, Gurrern, Van GRAAFEILAND,

and Mesxr1, Circuit Judges.

Appeal from an injunction entered by the United States

District Court for the Southern District of New York,

Charles M. Metzner, Judge, restraining appellants from

enforcing a copyright and interfering with the appellee’s

importation of an allegedly infringing mechanical toy bank.

The district court found that there was a clear showing of

probe bility of success on the merits because appellants’ toy

bank was only, with purely trivial variations, a copy of an

antique bank long in the public domain and therefore in

all probability not copyrightable. 394 F. Supp. 1389 (S.D.

[la]

Appendix A

N.Y. 1975). A divided panel of this court reversed. On

rehearing en bane the court of appeals affirmed the grant

of a preliminary injunction.

Judgment affirmed.

Rosert C. Faser, Stantey H. Liesersrermy, New

York, N.Y. (Ostrolenk, Faber, Gerb &

Soffen, New York, N.Y.), for Appellants.

Marx H. Sparrow, New York, N.Y. (Jacobs &

Jacobs, P.C., New York, N.Y., Albert L.

Jacobs, Jr., of counsel), for Appellee.

James E. Siecet, Myron Greenspan, New York,

N.Y. (Lackenbach, Lilling & Siegel, New

York, N.Y.), for E. Mishan & Sons, Inc.,

Amicus Curiae.

sO.

Oaxes, Circuit Judge:

Appellants Jeffrey Snyder and Etna Products Co., Inc.,

his licensee, appeal from a preliminary injunction granted

L. Batlin & Son, Ine. (Batlin), compelling appellants to

cancel a recordation of a copyright with the United States

Customs Service and restraining them from enforcing that

N.Y. 1975), as it had previously in Etna Products Co. v.

E. Mishan € Sons, 75 Civ. 428 (S.D.N.Y. Feb. 13, 1975),

that there was “little probability” that appellants’ copy-

right “will be found valid in the trial on the merits” on

the basis that any variations between appellants’ copy-

righted plastic bank and a cast iron bank in the public

domain were merely “trivial,” and hence appellants’ bank

insufficiently “original” to support a copyright. 394 F.

Supp. at 1390, citing Alfred Bell & Co. v. Catalda Fine

Arts, Inc., 191 F.2d 99 (2d Cir. 1951). We agree with the

Appendiz A

district court and therefore affirm the judgment granting

the preliminary injunction.

Uncle Sam mechanical banks have been on the American

scene at least since June 8, 1886, when Design Patent No.

16,728, issued on a toy savings bank of its type. The basic

delightful design has long since been in the public domain.

The banks are well documented in collectors’ books and

known to the average person interested in Americana. A

description of the bank is that Uncle Sam, dressed in his

usual stove pipe hat, blue full dress coat, starred vest and

red and white striped trousers, and leaning on his um-

brella, stands on a four- or five-inch wide base, on which

sits his earpetbag. A coin may be placed in Uncle Sam’s

- extended hand. When a lever is pressed, the arm lowers,

and the coin falls into the bag, while Uncle Sam’s whiskers

move up and dowr. The base has an embossed American

eagle on it with the words “Uncle Sam” on streamers above

it, as well as the word “Rank” on each side. Such a bank

is listed in a number of collectors »ooks, the most recent

of which may be F. H. Griffith, Mechanical Banks (1972

ed.) where it was listed as No. 280, and is said to be not

particularly rare.

Appellant Jeffrey Snyder doing business as “J.S.N.Y.”

obtained a registration of copyright on a plastic “Uncle

Sam bank” in Class G (“Works of Art”) as “sculpture” on

January 23, 1975. According to Snyder’s affidavit, in Janu-

ary, 1974, he had seen a cast metal antique Uncle Sam

bank with an overall height of the figure and base of 11

inches.' In April, 1974, he flew to Hong Kong to arrange

for the design and eventual manufacture of replicas of the

bank as Bicentennial items, taking the cast metal Uncle Sam

1 No cast iron antique bank was introduced in evidence below. A cast

metal replica hank was, and the court below, the parties, the witnesses,

and this court have treated the case as if the appellants’ plastic bank

were to be compared to the cast metal replica.

Appendix A

bank with him. His Hong Kong buying agent selected a

firm, “Unitoy,” to make the plastie “prototype” because of

its price and the quality of its work. Snyder wanted his

bank to be made of plastic and to be shorter than the cast

metal sample “in order to fit into the required price range

and quality aud quantity of material to be used.” The figure

of Uncle Sam was thus shortened from 11 to nine inches,

and the base shortened and narrowed, It was also decided,

Snyder averred, to change the shape of the carpetbag and

to include the umbrella in a one-piece mold for the Uncle

Sam figure, “so as not to have a problem with a loose

umbrella or a separate molding process.” The Unitoy repre-

sentative made his sketches while looking at the cast metal

bank. After a “clay model” was made, a plastic “prototype”

was approved by Snyder and his order placed in May, 1974.

The plastic bank carried the legend “© Copyright J.S.N.Y.”

and was assertedly first “published” on October 15, 1974,

before being filed with the Register of Copyrights in Janu-

ary, 1975.

Appellee Batlin is also in the novelty business and as

early as August 9, 1974, ordered 30 cartons of cast iron

Uncle Sam mechanical banks from Taiwan where its presi-

dent had seen the bank made, When he became aware of

the existence of a plastic bank, which he considered “an

almost identical copy” of the cast iron bank, Batlin’s trad-

ing company in Hong Kong procured a manufacturer and

the president of Batlin ordered plastic copies also. Begin-

ning in April, 1975, Batlin was notified by the United States

Customs Service that the plastic banks it was receiving

were covered by appellants’ copyright. In addition the Cus-

toms Service was also refusing entry to cast iron banks

previously ordered, according to the Batlin affidavit. Thus

Batlin instituted suit for a judgment declaring appellants’

Appendiz A

restraint of trade. The sole question on this appeal is

whether Judge Metzner abused his discretion in granting

Batlin a preliminary injunction. We find that he did not.

This court has examined both the appellants’ plastic

Uncle Sam bank made under Snyder’s copyright and the

uncopyrighted model cast iron mechanical bank which is

itself a reproduction of the original public domain Uncle

Sam bank. Appellant Snyder claims differences not only

of size but also in a number of other very minute details:

the carpetbag shapx _f the plastic bank is smooth, the iron

bank rough; the metal bank bag is fatter at its base; the

eagle on the front of the platform in the metal bank is

holding arrows in bis talons while in the plastic bank he

clutches leaves, this change concededly having been made,

however, because “the arrows did not reproduce well in

plastic on a smaller size.” The shape of Uncle Sam’s face

is supposedly different, as is the shape and texture of the

hats, according to the Snyder affidavit. In the metal ver-

sion the umbrella is hanging loose while in the plastic item

it is included in the single mold. The texture of the cloth-

ing, the hairline, shape of the bow ties and of the shirt

collar and left arm as well as the flag carrying the name

on the base of the statue are all claimed to be different,

along with the shape and texture of the eagles on the side.

Many of these differences are not perceptible to the casual

observer. Appellants make no claim for any difference

based on the plastic mold lines in the Uncle Sam figure

which are percentible.

Our examination of the banks results in the same con-

clusion as that of Judge Metzner in Etna Products, the

earlier case enjoining Snyder’s copyright, that the Snyder

bank is “extremely similar to the cast iron bank, save in

size and material” with the only other differences, such as

the shape of the satchel and the leaves in the eagle’s talons

being “by all appearances, minor.” Similarities include,

Appendix A

more importantly, the appearance and number of stripes

on the trousers, buttons on the coat, and siars on the vest

and hat, the attire and pose of Uncle Sam, the decor on his

base and bag, the overall color scheme, tle method of

carpetbag opening, to name but a few, After seeing the

banks and hearing conflicting testimony from opposing

expert witnesses as to the substantiality or triviality of the

variations and as to the skill necessary to make the plastic

model, the court below stated:

I am making a finding of fact that as far as I’m con-

cerned, it is practically an exact copy and whatever

you point to in this [sic] differences are so infini-

tesimal they make no difference. All you have proved

here by the testimony today is that if you give a man

a seven-inch model and you say I want this to come

out in a five-inch model, and he copies it, the fact that

he has to have some artistic ability to make a model

by reducing the seven to the five adds something to it.

That is the only issue in this case.

Mr. Faber: No, sir.

The Court: That is the only issue. I have given you

my finding of fact.

As Judge Metzner went on to say in his opinion, the

appellants’ plastic version “reproduces” the cast iron ban’:

“except that it proportionately veduces the height from

approximately 11 inches to approximately nine inches wit)

trivial variations.” 394 F. Supp. at 1390. The court noted

that appellants “went to great pains on the hearing to

prove that there were substantial differences hetween the

iron and the plastic articles,” id. at 1391, and found that

there had been no “level of input” such as in Alva Studios,

Inc. v. Winninger, 177 F. Supp. 265, 267 (S.D.N.Y. 1959)

(“great skill and originality” called for in producing an

exact scale reduction of Rodin’s famon~ “Hand of God,” to

ee ne

Appendia A

museum specifications). The substance of appellee’s ex-

pert’s testimony on which the district judge evidently

relied was that the variations found in appellants’ plastic

bank were merely “trivial” and that it was a reproduction

of the metal bank made as simply as possible for the pur-

poses of manufacture. In other words, there were no ele-

ments of difference that amounted to significant alteration

or that had any purpose other than the functional one of

making a more suitable (and probably less expensive)

figure in the plastic medium.

What the leading authority has called “the one pervad-

ing element prerequisite to copyright protection regardless

of the form of the work” is the requirement of originality

—that the work be the original product of the claimant.

1 M. Nimmer, The Law of Copyright §10, at 32 (1975).

This derives from the fact that, constitutionally, copyright

protection may be claimed only by “authors.” U.S. Const.,

art. I, §8; Burrow-Giles Lithographic Co. v. Sarony, 111

U.S. 53, 58 (1884). Thus, “[o]ne who has slavishly or

mechanically copied from others may not claim to be an

author.” 1M. Nimmer, supra, §6, at 10.2. Since the con-

stitutional requirement must be read into the Copyright

Act, 17 U.S.C. §1 et seq., the requirement of originality

is also a statutory one. Chamberlin v. Uris Sales Corp.,

150 F.2d 512 (2d Cir. 1945). It has been the haw of this

circuit for at least 30 years that in order to obtain a copy-

right upon a reproduction of a work of art under 17 U.S.C.

‘ 5(h)* that the work “contain some substantial, not merely

trivial originality ....” Chamberlin v. Uris Sales Corp.,

supra, 150 F.2d at 513.

2 While appellant Snyder’s copyright was obtained for a “Work of Art,”

it may he treated as one obtained for “reproductions of a work of art,”

Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092

1094 (2d Cir. 1974), since errors in classification do not invalidate pa

impair copyright protection under this express language of 17 U.S.C. § 5.

Appendix A

however, distinguished from novelty;

t creation, but it need not be

striking uniqueness, ingenious-

ness, or novelty, since the Constitution differentiates “au-

thors” and their “writings” from “inventors” and their

“discoveries.” Alfred Bell & Co. v. Catalda Fine Arts, Inc.,

supra, 191 F.2d at 100; Runge v. Lee, 441 F.2d 579, 581

(9th Cir.), cert. denied, 404 U.S. 887 (1971). Originality

means that the work owes its creation to the author and

this in turn means that the work must not consist of actual

copying. Alfred Bell & Co. v. Catalda Fine Arts, Inc.,

supra, 191 F.2d at 102-03; Sheldon v. Metro-Goldwyn Pic-

tures Corp., 81 F.2d 49, 94 (2d Cir. 1936), aff'd, 309 U.S.

(1940).

The test of originality is concededly one with a low

threshold in that “{aJll that is needed... is that the

‘author’ contributed something more than a ‘merely trivial’

variation, something recognizably ‘his own.’” Alfred Bell

dé: Co. v. Catalda Fine Arts, Inc., 191 F.2d at 103. But as

this court said many years ago, “fw]hile a copy of some-

thing in the public domain will not, if it be merely a copy,

stineuishable variation eS

93 F.2d

Originality is,

there must be independen

invention in the sense of

support a copyright, a di

Gerlach-Barklow Co. V. Morris & Bendien, Inc.,

159, 161 (2d Cir. 1927).

Necessarily, none of these underlying principles is dif-

“(r]eproductions of a work of art,”

”

ferent in the case of

17 U.S.C. §5(h), from the case of “[wlorks of art... .-,

17 U.S.C. §5(g). The requirement of substantial as op-

ariation and the prohibition of mechani-

posed to trivial v

e inherent in and subsumed

eal copying, both of which ar

3 The only case that appears to be

an exception to this rule is the

Appendiz A

by the concept of originality, apply to both statutory cat

a bcos: is implicit in that concept a csr td i.

intent cau over and above the requirement of

While the effort.” 1 M. Nimmer, supra, § 10.2, at 36.

perersath bapa oes of originality that is required may be

barat, 436 Poa peti pron hal Jewelry Corp. v. Gross-

to shenten t] t . = (20 Cir. 1970), we are not inclined

seniiieamaiia oe eee even if in the light of the

detie we dniitae ne utory bases therefor and our prece-

Pah ccmecgne: = 8 « art obviously presupposes

regen: md ork of art. Since Mazer v. Stein, 347 U.S

a a 5 : (statuette of Balinese dancer copyright-

ower Phe intended use as lamp base), it has been estab-

mal eler I st commercial ‘ects with a mini-

press of artistic craftsmanship may satisfy the

Prnessres A equirement of such a work. See also Pudd

: t sayy i Statuary, Inc., 450 F.2d 401, 402 (2d Cir 1971),

porter phat which qualifies as a work of art such as the

ht 2 ) “4 Sam mechanical bank may qualify as a

on bas ro ——- Section 5(g). See Rushton v. Vitale

oe 435-36 (2d Cir. 1955); Ideal Toy Corp. v.

WO esaadch 9 302 F.2d 623, 624 (2d Cir. 1962). The

poe — — of art may as here be in the public do-

rap ‘anal se n to claim the more limited protection given

features pane ~ of a work of art (that to the distinctive

must eniteie poe oe tense er), the reproduction

underlying work of pescy th scree bn present in the

1 M. Nimmer, supra. 4 20.2, at 93 e than a mere copy.”

« T * , " ,

“Hand of God” ease. Alva Studios. Inc. v. Winninger, 177 F. Supp. 265 reproductio f -

nots work :

(S.D.N.Y. 1959) (exact scale artistic reprodvetion of highly complicated ia of « work of art in a different medium sh ld

statue made with great precision was “original” as requiring “reat constitute the required iv} ; vies

Pres hg . originality for the

skill and originality”). This case 1s diseussed in the text infra. no one can claim to have inden d it] wensun Spat

: /enendently 1

ticular medium.” Jd y evolved any par-

tum.” Id. at 94. See Millworth tears

————————————— eee ————=—O

10a

Appendic A

Corp. v. Slifka, 276 F.2d 443, 444-45 (2a Cir. 1960). Cf.

Gardenia Flowers, Inc. v. Joseph. Markovitz, Inc., 280 F.

Supp. 776, 781 (S.D.N.Y. 1965). Professor Nimmer mente

to Doran v. Sunset House Distributing Corp., 197 F. Supp.

940 (S.D. Cal. 1961), aff'd, 304 F.2d 251 (9th Cir. 1962), as

suggesting “the ludicrous result that the first person to

execute a public domain work of art in a different medium

thereafter obtains a monopoly on such work in such me-

dium, at least as to those persons aware of the first such

effort.’ 1 M. Nimmer, supra, § 20.2, at 94. We do not fol-

low the Doran ease. We do follow the school of cases im

this cireuit and elsewhere supporting the proposition that

to support a copyright there must be at least some sub-

stantial variation, not merely a trivial variation such as

might occur in the translation to a different medium.

Nor can the requirement of originality be satisfied sim-

ply by the demonstration of “physical skill” or “special

training” which, to be sure, Judge Metzner found was re-

quired for the production of the plastic molds that fur-

nished the basis for appellants’ plastic bank. A consider-

ably higher degree of skill is required. true artistic skill,

to make the reproduction copyrightable. Thus in -1lfred

Bell & Co. v. Catalda Fine Arts, Inc., supra, 191 F.2d at

104-05 n.22, Judge Frank pointed out that the mezzotint

engraver’s art there concerned required “great labour and

talent” to effectuate the “management of light and shade

... produced by different lines and dots ... ,” means “very

different from those employed by the painter or draughts-

man from whom he copies... . ” See also Millworth Con-

verting Corp. v. Slifka, supra (fabrie designer required

one month of work to give three-dimensional color effect

to flat surface). Here on the hasis of appellants’ own ex-

pert’s testimony it took the Unitoy representative “[a]}bout

a day and a half, two days work” to produce the plastic

lla

Appendiz A

mold sculpture from the metal Uncle Sam bank. If there

be a point in the copyright law pertaining to reproductions

at which sheer artistic skill and effort can act as a substi-

tute for the requirement of substantial variation, it was

not reached here.

Appellants rely heavily upon Alra Studios, Inc. v. Win-

ninger, supra, the “Hand of God” case, where the court held

that “great skill and originality [were required] to pro-

duce a seale reduction of a great work with exactitude.”

177 F. Supp. at 267. There, the original sculpture was

“one of the most intricate pieces of sculpture ever created”

with “[iJnnumerable planes, lines and geometric patterns

. . Interdependent in [a] multi-dimensional work.” Jd.

Originality was found by the district court to consist pri-

marily in the fact that “it takes ‘an extremely skilled

sculptor’ many hours working directly in front of the

original” to effectuate a scale reduction. Id. at 266. The

court, indeed, found the exact replica to be so original,

distinct, and creative as to constitute a work of art in itself.

The complexity and exactitude there involved distinguishes

that case amply from the one at bar. As appellants them-

selves have pointed out, there are a number of trivial dif-

ferences or deviations from the original public domain cast

iron bank in their plastic reproduction. Thus concededly

the ;lastie version is not, and was scarcely meticulously

produced to be, an exactly faithful reproduction. Nor is

the ereativity in the underlying work of art of the same

order of inegnitude as in the case of the “IIand of God.”

Rovdin’s sculpture is, furthermore, sw unique and rare, and

adequate public access to it such a problem that a signifi-

eant public benefit acernes from its precise, artistic repro-

duction. No such benefit ean he imagined to accrue here

from the “knock-off” reproduction of the cast iron Unele

Sam bani. Thus appellants’ plastic hank is neither in the

caterory of exactitude required by Alva Studios nor in a

12a

Appendiz A

category of substantial originality: it falls within what

has been suggested by the amicus curiae is a copyright

no-man's land.

Absent a genuine difference between the underlying work

of art and the copy of it for which protection is sought,

the public interest in promoting progress in the arts—

indeed, the constitutional demand, Chamberlin v. Uris Sales

Corp., supra—could hardly be served. To extend copy-

rightability to minuscule variations would simply put a

weapon for harassment in the hands of mischievous copiers

intent on appropriating and monopolizing public domain

work. Even in Mazer v. Stein, supra, which held that the

statutory terms “works of art” and “reproduction of works

of art” (terms which are clearly broader than the earlier

term “works of the fine arts”) permit copyright of quite

ordinary mass-produced items, the Court expressly held

that the objects to be copyrightable, “must be original, that

is, the author’s tangible expression of his ideas.” 347 US.

at 214. No such originality, no such expression, no such

ideas here appear.

To be sure, the test of “originality” may leave a lot to

be desired, although it is the only one we have, in that as

one scholar has said, the originality requirement does not

perform the function of excluding commonplace matters

in the public domain from copyright status very effectively.

See Comment, Copyright Protection for Mass Produced

Commercial Products: A Review of the Developments Fol-

lowing Mazer v. Stein, 38 U. Chi. L. Rev. 807 (1971). In

any event, however, the articles should be judged on their

own merits, id. at 823, and on these merits appellants’ claim

must fail. Here as elsewhere in the copyright law there

are lines that must be drawn even though reasonable men

may differ where.

Judgment affirmed.

}

;

{

l3a

Appendiz A

Meski1, Circuit Judge (dissenting) :

I respectfully dissent,

. In the instant case the author has contributed substan-

tially more than a merely trivial variation. “Any ‘dis-

tinguishable variation’ of a prior work will constitute

sufficient originality to support a copyright if such varia-

tion is the product of the author’s independent efforts

and is more than merely trivial.” 1 Nimmer on Copyright

§ 10.1 at 34.2. In accord with the purposes of the copy-

right law to promote progress by encouraging individual

effort through copyright protection, we should require

only minimal variations to find copyrightability. The

independent sculpting of the mold for the plastic bank

and the aggregated differences in size and conformation

of the figurine should satisfy this standard.

The plastic bank in question admittedly is based on a

work now in the public domain. This does not render it

uncopyrightable Since “[i]t is hornbook that a new and

original plan or combination of existing materials in the

public domain is sufficiently original to come within the

nminger, 177 F.Supp. 265, 267 (S.D.N.Y. 1959). The courts

have a emphasized that only a modest level of

originality is necessary to be eligible f i

Alfred Bell & Co. v. Catalda Fine _wn sie pn pon

102-103 (2 Cir. 1951). See also, Thomas Wilson é Co .

Irving J. Dorfman Co., 433 F.2d 409, 411 (2 Cir. 1970)

and Dan Kasoff, Inc. v. Novelty Jewelry Co., Inc., 309

F.2d 745, 746 (2 Cir. 1962), where this Court vequiced

only a “faint trace of originality” to support a copyright

. Looking first to copyright cases involving soulpteren.

in Puddu v. Buonamici Statuary, Inc., 450 F.2d 401 402

(2 Cir. 1971), this Court found that where plaintiff's

employee had sculpted statuettes from scratch, even though

l4a

Appendia A

there was a “strong family resemblance between the copy-

righted and the uncopyrighted models, the differences suf-

fice to satisfy the modest requirement of originality. san

Originality sufficient for copyright protection exists if the

‘author’ has introduced any element of novelty as contrasted

with the material previously known to him.” Similarly, in

Blazon, Inc, v. DeLuxe Game Corp., 268 F.Supp. 416, 422

(S.D.N.Y. 1965) the court assumed a hobby horse could he

copyrightable since plaintiff could have addel “unique

features to the horse, enlarged it and made it svfficiently

dissimilar from defendant’s horse as to render it copy-

rightable. . . .” See also Royalty Designs, Inc. v. Thriftt-

check Service Corp., 204 F.Supp. 702 (S.D.N.Y. 1962)

(banks in shape of dogs); F. W. Woolworth Co. v. Con-

temporary Arts, 193 F.2d 162 (1 Cir. 1951) (originality in

shape of dog figurine). The fabric cases likewise have found

designs copyrightable with only a “very modest grade of

originality.” Peter Pan Fabrics, Inc. v. Dan River Mills,

Inc., 295 F.Supp. 1366, 1368 (S.D.N.Y. 1969). In the latter

ease, the embellishment and expansion of purchased designs

before being rolled onto fabric constituted the “slight addi-

tion” sufficient to qualify as originality. Finally, there are

also cases where no changes were required because the pro-

cess of reproduction itself required great skill. See Alva

Studios, Ic. v. Winninger, supra, where originality was

found in a detailed sealed reproduction differing only in the

treatment of the rear side of the base; see alse Milhvorth

Converting Corp. v. Slifka, 276 F.2d 443 (2 Cir. 1960) (erea-

tion of a three dimensional effect on a flat fabrie required

effort and skill).

Turning to the case at bar, Judge Metzner made a factual

finding that the plastic bank embodied only trivial varia-

tions from the bank in the public domain. There is prece-

dent in this Cireuit to support appellate reconsideration

of factual findings where the panel has the same record and

15a

Appendiz A

no part of ti.. decision below turned on credibility. Soptra

Fabrics Corp. vy. Stafford Knitting Mills, Inc., 490 F.2d

1092, 1093 (2 Cir. 1974) (per curiam). This principle should

be applied to the present situation since this Court has had

the opportunity to view the exhibits. I make no claim that

the process of sculpting involved here is as complex as in

Alva Studios (scaled version of Rodin sculpture) or in

Alfred Bell (mezzotint engravings of art classics). How-

ever, those cases depended solely on difficulty of process

to establish originality, since there was no attempt to alter

or improve upon the underlying work.

The most obvious differences between the two exhibits

in this case are size and medium. While these factors alone

may not be sufficient to render a work copyrightable, they

surely may be considered along with the other variations.

On the other hand, the author’s reasons for making changes

should be irrelevant to a determination of whether the

differences are trivial. As noted in Alfred Bell, supra, 191

F.2d at 105, even an inadvertent variation can form the

hasis of a valid copyright. After the fact speculation as

to whether Snyder made changes for aesthetic or functional

reasons should not be the basis of decision.

The primary variations between the two banks involve

height; medium; anatomical proportions of the Uncle Sam

figure, including shape and expression of face; design of

the clothing (hat, tie, shirt, collar, trousers) ; detail around

the eagle figure on the platform; placement of the um-

brella; and the shape and texture of the satchel. Granting

Snyder a copyright protecting these variations would en-

sure only that no one could copy his particular version of

the bank now in the public domain, i.e., protection from

someone using Snyder’s figurine to slavishly copy and make

a mold. In Alva Studios, supra, 177 F. Supp, at 267, where

the author produced no distinctive variations of his own

in reproducing the Rodin sculpture, the court still found

l6a

Appendix A

that the reproduction was copyrightable and that infringe-

ment was possible; although mere resemblance would not

justify a finding of infringement where the principal ele-

ments of a design were taken from the public domain,

evidence of actual copying would support such a finding.

This approach seems quite in accord with the purpose of

the copyright statute—to promote progress by encourag-

ing individual effort through copyright protection. The

relatively low standard of originality required for copy-

rightability is derived from this purpose. The objective

is to progress first and, if necessary, litigate the question

of infringement later. In the meantime, the public culture

benefits from progress; the issue of who is entitled to the

profits should not induce rigidity and slowness in indus-

tries and fields naturally subject to great flux.

Accordingly, I would reverse the district court decision.

17a

APPENDIX B

Opinion of the United States Court of Appeals for the

Second Circuit (October 24, 1975)

UNITED STATES COURT OF APPEALS

For tue Seconp Circuit

+O.

No. 1249—September Term, 1974.

(Argued August 11, 1975 Decided October 24, 1975.)

Docket No. 75-7308

+or

L. Batu & Son, Ixc.,

Plaintiff-Appellee,

Jerrrey Syyper, d/b/a J.S.N.Y. and

Erna Propucts Co., Inc.,

Defendants-A ppellants.

Before:

Oakes, VAN GRAAFEILAND and MESKILL,

Circuit Judges.

Appeal from an injunction granted by the District Court

for the Southern District of New York, Charles M. Metz-

ner, J., restraining appellant Synder from enforcing his

of a possibly infringing toy bank. The district court found

that there was a clear showing of probability of success

on the merits because the toy bank was with minor varia-

tions taken from the public domain and was not copy-

rightable. (Reported below at 394 F.Supp. 1389.)

Reversed.

—+or

18a

Appendix B

Mank H. Sparro, New York, New York (Jacobs

& Jacobs, P.C., New York, New York,

of counsel), for l’laintiff-Appellee.

Robert C. Fasen, New York, New York (Mare

S. Gross, Ostrolenk, Faber, Gerb & Soffen,

New York, New York, of counsel), fur De-

fendants-A ppellants.

—_>

Moesnitn, Circuit Judge:

The appellants, Jeffrey Snyder and Etna Products Co.,

Tue. (For the sake of convenience, the appellants herein

will be referred to collectively as “Snyder”), appeal from

i preliminary injunction in favor of the appellee, L. Bat-

lin & Son, Ine. (“Batlin”) compelling Snyder to cancel

x recordation of a copyright with the United States Cus-

ioms Serviee, and restraining him from enforcing that

of New York (Metzner, J.), based its action granting the

injun-tion vpen a finding that the object of the purported

and yvaeate the preliminary injunction.

I. Factuat Backcrounp

In 1886 a design patent was obtained on an eleven-inch

high cast iron mechanical Uncle Sam bank. This bank

(“hesie bank”) pessed into the public domain when the

patent protection expired some time prior to 1909. Aci

of July 8, 1870, ¢. 230 $73, 16 Stat. 210, now 35 U.S.C.

to model a nine-inch replica of the original hank. The

-maller model was tranformed into a mold. From that

mold, plastic versions of the Uncle Sam bank (“Snyder

bank”) were produced in Hong Kong and shipped to this

country for sale hy Snyder. The nine-inch plastic bank

— ES <a eRe Se

ne ee

19a

Appendiz B

and the original eleven-inch metal bank are generally

similar. Each consists of a representation of “Uncle Sam”

attired in patriotic garb, standing on a soap box with a

carpetbag at his side. Uncle Sam accepts a coin placed

into his outstretched right hand, and, when the donor

presses a lever, Uncle Sam deftly inserts the coin into

his bag. His mouth opens and closes as if to say “thank

you.”

Snyder obtained a copyright on his version of the bank,

claiming it to be a work of art.’ See, e.9., Royalty Designs,

Inc. v. Thriftneck Service Corp., 204 F.Supp. 702, 703

(S.D.N.Y., 1962). Subsequently, Batlin attempted to im-

port his own plastic version of the bank which was also

produced in Hong Kong. Batlin claims that he was sub-

stantially blocked from this endeavor by the United States

Customs Service, which, presumably, at Snyder’s behest,

refused to permit entry of this other bank, pursuant to

Customs Regulations which permit the exclusion of pirated

or infringing goods, 19 C.F.R. 4133. He further claims

that he received a letter from Snyder threatening suit

should he persist in marketing the bank. Thereupon, Bat-

lin filed suit in district court, seeking a declaratory judg-

ment and damages from claims of unfair competition and

violation of antitrust law, and requesting relief in the

form of preliminary and permanent injunctions.’ Batlin

1 17 U.S.C. §5(g), set forth in Footnote 8. If the item does not fall

under (g) as a work of art, the mistake in designation of the appro-

priate subsection of the law in the application is not fatal. If the object

falls into any other category of copyrightable items, it is protected

nevertheless. 17 U.S.C. §5; Soptra Fabrics Corp. v. Stafford Knitting

Mills, Inc., 490 F.2d 1092, 1094 (2d Cir., 1974), cert. denied, 416 US.

986; Peter.Pan Fabrics, Inc. v. Dan River Mills, Inc., 295 F.Supp. 1366,

1368 (S.D.N.Y.), aff'd. 415 F.2d 1007 (2d Cir., 1969).

2 The plaintiff also joined the United States Customs Service in its

suit and its request for preliminary relief. It requested the district

court to enjoin the Customs Service from enforcing the defendants’ copy-

right and exeluding entry to the plaintiff's bank. The court's action in

dismissing that portion of the action is not at issue on this appeal.

20a

Appendix B

alleged that it will suffer irreparable damage by virtue of

loss of profits and goodwill, due to its inability to live up

to its commitment to deliver orders because of the Cus-

toms Service ban on importation of its bank.

This is not the first time that the district court has had

to deal with “Uncle Sam’s” fate. Etna Products and Jef-

frey Snyder, d/b/a J.S.N.Y. v. E. Mishan @ Sons, 75 Civ.

428 (S.D.N.Y., 1975) was an earlier case launched by

Snyder, wherein he sought a preliminary injunction, claim-

ing copyright infringement and unfair competition. The

district court granted relief to Snyder on the unfair com-

petition ground only, finding that it had serious doubts as

tu whether the copyright could be sustained.’ Consistently

with its determination in that case, the same court had

difficulty with the copyrightability of Snyder’s bank in the

instant case. It noted that “to support a valid copyright

as a reproduction, only originality is required. Gardenia

Flowers, Inc. v. Joseph Markowits, Inc., 280 F.Supp. 776

(S.D.N.Y., 1968); Nimmer on Copyrights, § 20.3.” The

court went on to say “. . . [Snyder] contends that the

concept of originality embraces a mere copying if it re-

quires artistic skill to achieve the finished product. The

[District] Court agrees that in this case a degree of physi-

cal artistic skill was necessary to produce the plastic ar-

ticle. What [Snyder overlooks] is that this artistic skill

must contribute to the work. It must be more than a

merely trivial variation, which is all that is present here.

The need for artistic skill in the execution of the copy is

not sufficient [to satisfy the need for copyrightability].”

The court went on to conclude that since there was little

probability that the Snyder bank would be held to be copy-

rightable, there was a clear showing that Batlin would

3 That case, Etna Products and Jeffrey Snyder, d/b/a J.S.N.Y. v. E.

Mishan & Sons, is being held in abeyance pending the outcome of this

appeal, in which E. Mishan & Sons has participated as amicus curiae.

ee ee Nn ee eee

21a

Appendix B

probably succeed at a trial on the merits.‘ Thereupon, the

district court granted Batlin’s application for a prelimi

nary injunction, restrained Snyder from enforcing his

with the United States Customs Service pending adjudi-

cation of the issue on the merits.

Upon appeal, an order granting or denying a prelim-

inary injunction will not lightly be disturbed, unless it

contravenes some rule in equity or is the result of improvi-

dent exercises of judicial discretion. Meccano Ltd. v. John

Wannamaker, New York, 253 U.S. 136, 140 (1920); Amer-

ican Visuals Corp. v. Holland, 219 F.2d 223, 224 (2d Cir.,

1955); Joshua Meir Co. v. Albany Novelty Mfg. Co., 236

F.2d 144, 146 (2d Cir., 1956).°

Works within the public domain are rendered noncopy-

rightable by 17 U.S.C. § 8.8 Although the basic bank is

itself excluded from copyright protection, Snyder’s repro-

4 It appears that the parties have conceded the existence of irreparable

harm, hence that issue is not before us. However, with respect to an

injunction restraining the appellants from enforcing their copyright with

the United States Customs Service, it does not appear from the record

that the issue of the appellee's exhaustion of remedies with the Customs

Service was raised. A determination on this issue could conclude the

case.

5 Amicus E. Mishan & Sons’ argument that the injunction should be

sustained in order to preserve the status quo is not well taken. The

injunction changed the siatus quo by preventing the appellant from

enforcing the copyright. Actions temporarily enforcing a copyright,

thereby barring parties from doing business, have been sustained, pend-

ing litigation. Omega Importing Corp. v. Petri-Kline Camera Co., 451

F.2d 1190, 1197 (2d Cir., 1971), cert. denied, 408 U.S. 943; American

Code Co., Inc. v. Bensinger, 282 F. 829, 835 (2d Cir., 1922).

6 17 U.S.C. $8 states in pertinent part:

“§ 8. Copyright not to subsist in works in public domain, or published

prior to July 1, 1909, and not already copyrighted . . .

No copyright shall subsist in the original text of any work which is

in the public domain, or in any work which was published in this

country or any foreign country prior to July 1, 1909, and has not

been already copyrighted in the United States... ."

22a

Appendix B

duction ef it is copyrigltable if it may be regarded as an

adaptation of a work of art in the public domain, 17

US.c. 672 It may qualify cither as a work of art, 17

U.S.C. §5(g) as claimed in Snyder's application, or as a

reproduction of a work of art, 17 U.S.C. § o(h).* Thus the

fact that an idea is in the public domain does not render

an expression of that idea uncopyrightable. Donald v.

Uarco Business Forms, 478 F.2d 764, 766 (Sth Cir., 1973) ;

M. M. Business Forms Corp. v. U arco, Inc., 472 F.2d 1137,

1139 (6th Cir., 1973) ; Millworth Converting Corp, v. Slifka,

976 F.2d 443, 445 (2d Cir., 1960) (dictum). See also:

American Code Co., Inc. v. Bensinaer, 282 F. 829, 834 (2d

Cir., 1922); Arelbank v. Rony, 277 F.2d 314, 317 (9th Cir.,

1960); Continental Casualty v. Beardsley, 253 F.2d 702

(2d Cir., 1958), cert. denied, 358 U.S. 816; Alfred Bell &

7 67. Copyrivht on compilations of works in public domain or of

copyrighted works; subsisting copyrights not affected . . .

Compilations or abridgments, adaptations, arrangements, drama-

tizations, translations, or other versions of works in the public

domain or of copyrighted works when produced with the cons: ot of

the proprietor uf the copyright in sueh works, or works republished

with new matter, shall Le regarded as new works subject to copy-

right under the vrovisions of this title; but the publication of any

such new works shall not affect the force or validity of any sub-

sisting copyright upon the matter employed or any part thereof,

or be construed to imply an exclusive right to such use of the orig-

inal works, or to secure or extend copyright in such original works.

8 That section provides, in pertinent part, as follows:

§5. Classification of works for registration... .

The application for registration shall specify to which of the fol-

lowing classes the work in which copyright is claimed helongs:

. 7. * * .

(x) Works of art; models or designs for works of art.

(h) Reproductions of a work of art.

7. 7 * . .

The above specifications shal] not be held to limit the subject

matter of copyright as defined in section 4 of this title, nor shall

any error in classification invalidate or impair the copyright protec-

tion secured under this title.

23a

Appendix B

Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d

Cir., 1951); Dorsey v. Old Surety Life Ins. Co., 98 F.2d

872, 873 (10th Cir., 1938); Grove Press, Inc. v. Collectors

Publication, Inc., 264 F.Supp. 603 (C.D.Cal., 1967); But

Cf. Harold Lloyd Corp. v. Witwer, 65 F.2d 1, 17, 18 (9th

Cir., 1933), cert. denied, 296 U.S. 669. Hence, the instant

appeal presents the question of determining whether this

reproduction of a work in the public domain is a fit sub-

ject for protection under the copyright laws as a work of

art, or as a reproduction of a work of art. The record,

fortified by the district court’s carefully formulated find-

ings, is sufficiently ripe for appellate review. We must

determine whether Uncle Sam can ever attain the status

of art, or forever be condemned to an ignoble and unpro-

tected commercial status. Eg. Rushton v. Vitale, 218 F.2d

434, 436 (2d Cir., 1955).

II. “Work or Arr” anp CopyriGHTABILITY

The difficulty in fashioning a precise definition for the

term “work of art” is manifest. We are faced with the

task of formulating an expression sufficient to guide judi-

cial interpretation with consistency, without imposing a

new orthodoxy over esthetic sensibility. Bleistein v. Don-

aldson Lithographing Co., 188 U.S. 239, 251 (1903). Web-

ster devotes more than half a column in an attempt to

define the term, the pertinent parts of which are repro-

duced in the margin.® 37 C.F.R. § 202.10, the Copyright

9 Webster's Third New International Dietionary (Unabridged) (1961)

states:

. . . Bystematic application of knowledge or skill in effecting a

desired result . . . application of skill and taste to production ac-

cording to aesthetic principles: the conscious use of skill, taste, and

creative imagination in the practical definition or production of

beauty . . . the product of skill and taste applied according to

aesthetic principles: expression of beauty . . . ART is the most

variable of these words in meaning, often interchangeable with,

24a

Appendix B

Office Regulations, are no inore specific in formulating a

workable test.’®

in order to properly understand the term as it should

be applied, we must analyze the purpose of the copyright

legislation in the light of history. Wetro-Goldwyn-Mayer

D. Corp. v. Bijou Theatre Co., 59 F.2d 70, 76 (1st Cir.,

1982). The law of copyrights evolved from two roots:

common law and legislation. The former concerned the

right of an author to initially publish works identical to

his own. 2 Blackstone, Commentaries (1766) Ch. 26, §8.

Sev Public Affairs Associates, Inc. v. Rickover, 284 F.2d

262, 267 (2d Cir., 1960). The latter developed as a means

of protecting the correctness of the copies, and not the

property rights of the author. It was a type of quality-

control device, later extended. to protect the printer’s

rights. Under Tieury VIII (1533), it was utilized to pro-

often contrasting with, the others: [skill, craft, artifice] its sig-

nificant weight can fall upon recondite, inventive, or creative power.

It can, like SKII.L, suggest proficiency or expertness . . . or, like

CRAFT, or, rarely, like ARTIFICE, ean point to skill, ingenuity,

and inventivenes3 in contriving even though the act or result lacks

any true creative force or quality .... But more frequently and in

its most distinct sense ART contrasts with SKILL, ARTIFICE, and

CRAFT in putting stress upon something more, in implying a per-

sonal, un-analyzable creative force that transmits and raises the art

or product beyond a skill, artifice, or craft though it may involve

the essential clements of all of these... .

10 37 C.F.R. § 202.10:

$202.10 Works of art (Class G).

(a) General. This class includes published or unpublished works

of artistie craftsmanship, insofar as their form hut not their mevhan-

ical or utilitarian aspects are concerned, such as artistic jewelry,

enamels, glassware, and tapestries, as well as works belonging to

the fine arts, such as paintings, drawings and sculpture.

(hb) In order to he aeceptable as a work of art, the work must

embody some creative authorship in its delineation or form. The

registrability of a work of art is not affected by the intention of

the author 2s to the use of the work, the number of copies repro-

duced, or the fact that it appears on a textile material or textile

25a

Appendix B

tect England’s printers from foreign competition.”’ Later

it was used for the purpose of suppressing sedition. Both,

however, concerned the protection of literary works and

revolved around the growth of printing.’*? R. R. Bowker,

States v. Steffens, 100 U.S. 82, 94 (1879).

It is only in the mid-nineteenth century that the copy-

right protection was extended to works of art and repro-

ductions of them.'* The continued expansion of the ambit

of copyright protection is merely a transposition of the

same type of protection accorded to written works to dif-

ferent modes of expression. Markham v. A. EF. Borden

Co., 206 F.2d 199, 202 (1st Cir., 1953) (Dictum); note,

Products: A Review of the Developments Following

Mazer v. Stein, 28 U.Chi.L.Rev. 807, 808. The extension

of the law did not increase the scope of the protection

afforded; it merely added to the list of subjects covered.

In this respect, it is critical to note that the scope of the

product. The potential availability of protection under the design

patent law will not affect the registrability of a work of art, but

a copyright claim in a patented design or in the drawings or photo-

graphs in a patent application will not be registered after the patent

has been issued.

(ec) If the sole intrinsic function of an article is its utility, the

fact that the article is unique and attractively shaped will not

qualify it as a work of art. However, if the shape of a utilitarian

article incorporates features, such as artistic sculpture, carving, or

pictorial representation, which can be identified separately and are

capable of existing independently as a work of art, such features

will be eligible for registration.

ll This protectionist element survives, see 17 U.S.C. § 16.

12 Except perhaps in Roman times. See R. R. Bowker, Copyright: Its

History and Its Laws, 8.

13 The Copyright Act of 1870 extended coverage to “paintings, drawings,

choromos, statutes, [sic] statuary and models and designs intended to be

perfected as works of the fine arts.” R.S. § 4952 (Act of July 8, 1870,

c. 230 § 86). See Mazer v. Stein, 347 U.S. 201, 204 (1954).

26a

Appendix B

protection extended only to the particular expression of

an idea and never to the idea itself. Mazer v. Stein, 347

U.S. 201, 217 (1954); Baker v. Sclden, 101 U.S. 99, 102-103

(1897); Universal Athletic Sales Co. v. Salkeld, 511 F.2d

904, 906 (3d Cir., 1973); M. M. Business Forms Corp., v.

Varco, Inc., supra, 472 F.2d 1137, 11389; Uneeda Doll Co.,

Inc. v. P & M Doll Co., Inc., 353 F.2d 788, 789 (2d Cir.,

1963); Welles v. Columbia Broadcasting System, 308 F.2d

810, S14 (9th Cir., 1962); Eisenschiml v. Fawcett Publi-

cations, 246 F.2d 598, 603 (7th Cir., 1957), cert. denied,

355 U.S. 907; Chamberlin vy. Uris Sales Corp., 150 F.2d

512, 513 (2d Cir., 1945); R. C. A. Mfg. Co. v Whiteman,

114 F.2d 86, 90 (2d Cir., 1940), cert. denied, 311 U.S. 712;

Guthrie v. Curlett. 36 F.2d 694, 696 (2d Cir., 1929); Dymow

v. Bolton, 11 F.2d 690, 691 (2d Cir., 1926); Emerson v.

Davies, (1845) 8 Fed. Cas. 615; 618-621 (Story, Justice).

The protection of ideas exists, if at all, in patent legisla-

tion. Mazer v. Stein, supra, 347 U.S. 201. Hence the term

“art” is used in a generic and not qualitative sense: the

article to be copyrighted need not constitute a substantive

advance in a concept, but it is sufficient if it is an ex-

pression of a concept already in existence.

The reason for the distinetion between idea and expres-

sion is basic to the difference between patent and copy-

right laws. Patents require a considerable amount of nov-

eltvy not required by copyrights. Mazer v. Stein, 204 F.2d

472, 474 (4th Cir., 1953), aff'd. 347 U.S. 201; Baker v.

Selden, supra, 101 U.S. 99; Wheaton v. Peters, 33 U.S. (8

Peters 591) 223, 234: Thomas Wilson & Co. v. Irving

Dorfman Co., 483 F.2d 409, 411 (2d Cir., 1970), cert. de-

nied, 401 U.S. 977; Gelles-Widmer Co. v. Milton Bradley

Co., 313 F.2d 143, 146 (7th Cir., 1963), cert. denied, 373

U.S. 913; National Comics Publication v. Fawcett Publi-

cations, Inc.. 191 F.2d 594, 599 modified 198 F.2d 927 (2d

Cir., 1951) (1.. Hand, J.). Patents concern generally ideas,

27a

Appendix B

inventions which can be applied to an indefinite number

of applications. Perris v. Ilexamer, 99 U.S. 674 (1878).

Copyrights, however, refer to creations which are expres-

sions of ideas. A most basic exposure to the history of

art will provide ample proof that while a core concept

may remain unchanged, its manifestation in artistic work

varies sharply with its cultural and historical surronnd-

ings. This is readily apparent in the commercial context:

today’s fashions are tomorrow’s castaways; yesterday's

news is old hat (and need not be tomorrow’s history).

Although the literary expression of news is copyrighit-

able, the factual subject matter is not. International News

Service v. Associated Press, 248 U.S. 215, 254 (1918);

Chicago Record-Herald Co. v. Tribune Ags’n., 275 F. 797,

798 (7th Cir., 1921). Thus copyrightable works of art

often have value for only a short time span, and are use-

ful in a very limited historical and cultural context. See,

e.g. Millworth Converting Corporation v. Slifka, supra,

276 F.2d 448, 444; Soptra Fabrics Corp. v. Stafford Knit-

ting Mills, Inc., 490 F.2d 1092, 1093 (2d Cir., 1974), cert.

denied, 416 U.S. 986.14 Consequently, since it is merely

the representation of ideas which is protected, and that

expression is so time-bound (in an historical and eultural

context), only a very low standard must be satisfied for

a work to pass muster with respect to copvrightability.

Bleistein v. Donaldson Lithographing Co., supra,.188 US.

239; Universal Athletic Sales Co. v. Salkeld, supra, 511

F.2d 904, 908; Donald v. Varco Business Forms, supra,

478 F.2d 704, 765; Thomas Wilson & Co. v. Irving J. Dorf-

man Co., 433 F.2d 409, 411 (2d Cir., 1970), cert. denied,

401 U.S. 977; 7. M. Kolbe Co. v. Avmaqus Textile Co., 315

F.2d 70, 72 (2d Cir., 1963); Adventures in Good Fating

v. Best Places to Fat, 131 F.2d 809, 812 (7th Cir., 1942).

14 All parties concede that the bank's commercial value is greatly time-

bound, because it is marketed with the Bicentennial celebration in mind.

28a

Appendix B

This time limitation also rationalizes from an operational

viewpoint the differences between the patent office and

the copyright office. Weir v. Gordon, 111 F.Supp. 117,

123 (E.D.Mich.), aff'd. 216 F.2d 508 (6th Cir., 1954). The

patent office provides an elaborate but time-consuming

searel mechanism designed to prevent infringements or

interference and to insure novelty of the idea. The copy-

right office regulations have no such provisions. Compare

30 U.S.C. Chs. 12 and 13 with 17 U.S.C. and 37 C.F.R.

Ch. 1 with 37 C.F.R. Ch. 2. Unless an article does not fall

into a copyrightable category it will be entitled to copy-

right protection if the parties follow the proper procedures.

The primary purpose of copyrights, as mandated by the

Constitution, Art. 1, § 8, Cl. 8, is “to promote the Progress

of Science and the Useful Arts’. . .”; financial reward is

secondary. United States v. Paramount Pictures, 334 US.

131, 158 (1947); Twentieth Century Music Corp. v. Atken,

3900 F.2d 127, 130, n. 6 (3d Cir., 1974), cert. denied, 416

U.S. 1067; Berlin v. E. C. Publications, Inc., 329 F.2d 541,

543 (2d Cir., 1964), cert. denied, 379 U.S. 822: Continental

Casualty v. Beardsley, supra, 253 F.2d 702, 704, cert.

denied, 358 U.S. 816; Becker v. Loews. Inc., 133 F.2d 889,

891 (7th Cir., 1943), cert. denied, 319 U.S. 772. Progress

in the arts connotes rapid dissemination. A copyright

hecomes akin to a notice or a claim for priority amongst

creditors. The claims can be staked out rapidly so that

articles of culturally perishable content can rapidly enter

the stream of commerce. Thus it is possible for one valid

infra.

In order for copyright protection to have any commercial

meaning in this context, however, the standards relating

to infringement must be much higher than those relating

to mere copyrightability.

29a

Appendiz B

In Puddu v. Buonamici Stoiuary, Inc., 450 F.2d 401, 402

(2a Cir., 1971), Judge Friendly pointed out this other dis-

tinction so crucial to our analysis. !{e noted that the

standards for determining whether an object is copyright-

able differ from the standards applied to determine whether

an object infringes upon a copyright. Cf. Willworth Con-

verting Corporation v. Slifka, supra, 276 ¥.2d 433; Alfred

Bell & Co., Ltd. v. Catalda Fine Arts, lne., supra, 191 F.2d

99, 102, 104, n. 2; Helm v. Universal Pictures Co., 154 F.2d

48), 488, n. 17 (2d Cir., 1946); Alva Studios, Inc. v. Win-

niger, 177 F.Supp. 265, 267 (S.D.N.Y., 1959) ; See Universal

Athletic Sales Co. v. Salkeld, supra, 511 F.2d 904, 908. The

different levels of creativity to he applied to these two

situations can be understood from the nature of the inter-

est protected and the means for effectuating that protec-

tion, as provided in the statutes and regulations discussed

above.

“The test of copyright infringement is whether similar-

ity between the products would lead ‘the average lay ob-

server ... [to] recognize fan] alleged copy as having

been appropriated from the copyrighted work.’” Jlerbert

Rosenthal Jewelry Corp. v. Honora Jewelry Co., Tnc., 509

F.2d 64, 65 (2d Cir., 1974). Hence there can be an in-

fringement if there is a substantial similarity between the

items in question. Id.; Soptra Fabrics Corp. v. Stafford

Kuitting Mills, Inc., supra, 490 F.2d 1092, 1093, cert. de-

nied, 416 U.S. 986. The infringer must act at his peril,

because a truly innocent infringement is unlikely. Mazer

v. Stein, supra, 347 U.S. 201; I. M. Kolbe Co. v. Armaus

Textile Co., supra, 315 F.2d 70, 72. In contradistinction

to infringement, an article need only fall into the proper

category of articles in order to be copyrightable. Such

an article can still constitute an infringement of another

30a

Appendix B

aff'd. 216 F.2d 508; e.g. Patterson v. Century Productions,

Inc., 93 F.2d 489, 491 (2d Cir., 1937), certedenied, 303 U.S.

655; Marold Lloyd Corp. v. Witwer, supra, 65 F.2d 1, 17,

cert. denied, 296 U.S. 669; but see American Code Co. Vv.

Bensinger, 282 F. 829, 833 (2d Cir., 1922). The objective

is to progress now and, if necessary, litigate later; let

the courts determine which party is entitled to damages

should it find infringement. In the meantime, the public

culture benefits from progress; the issue of who is entitled

to profits should not induce rigidity and slowness in

inilustries and fields naturally subject to great flux.

Consequently, for purposes of copyrightability, the issue

of whether an article is an object of art or not narrows to a

judgment as to fact, and not a judgment of artistic sensi-

bility. Tennessee Fabricating Co. v. Moultrie Manufactur-

inq Co., supra, 421 F.2d 279, 281, cert. denied, 398 US.

998: George Hensher Ltd. v. Restawile Ltd. (1974) 2

AILE.R. 420, 426. The tests imposed for copyrightability,

are as indicated by the previous discussion, at best, mini-

mal. Art, for the purposes of copyright law has two requi-

site elements: creativity and originality. See: United

States v. Steffens, supra, 100 U.S. 82. 94 (dictum) ; Emer-

son vy, Davies, supra, 8 Fed.Cas. 615, 618-21; Donald v.

Uarco Business Forms, supra, 478 F.2d 764, 765; Tennes-

see Fabricating Co. v. Moultrie Manufacturing Co., supra,

421 F.2d 279, 281, cert. denied, 398 U.S. 928; Drop Dead Co.

v. S.C. Johnson & Son, Inc., 236 F.2d 86, 92 (9th Cir. 1963) ;

Rushton v. Vitale, supra, 218 F.2d 434, 435; McIntyre v.

Double-A Music Corp., 179 F.Supp. 160, 162 (S.D.Cal.,

1959); Dunham v. General Mills, Inc., 116 F.Supp. 152, 154

(D.C.Mass., 1953); Nimmer on Copyrights ¢$191, 192.

Creativity can be determined from observing the object it-

solf in comparison with others; originality can he gauged

from evaluating the process by which the object was made.

3la

Appendix B

Creativity in this context means only that the object

created be more than a trivial variation from what existed

before. This implies a modicum of novelty. It has been

said in many cases that novelty is not required in order to

satisfy the requirements for copyrightability. Roth Greet-

ing Cards v. United Card Co., 429 F.2d 1106, 1109 (9th Cir.,

1970) ; Donald v. Zack Meyer’s T.V. Sales and Service, 426

F.2d 1027, 1029 (5th Cir., 1970), cert. denied, 400 U.S. 992;

Peter Pan Fabrics, Inc. v. Dixon Textile Corp., 280 F.2d

800, 802 (2d Cir., 1960); Whitol v. Wells, 231 F.2d 550, 553

(7th Cir., 1956); Mazer v. Siein, supra, 204 F.2d 472, 474,

aff'd. 347 U.S. 201, 218; Cf. J. C. Lahore, Art and Function

in the Law of Copyright and Designs, 4 Adclaide L.Rev. 183,

200. There have been some cases to the contrary, however.

See: Rushton vy, Vitale, supra, 218 F.2d 434, 435.° This

apparent conflict can be rationalized, however, to mean

that the degree of novelty required for patentability need

not be reached for copyrightability. Thomas Wilson & Co.

v. Irving J. Dorfman Co., supra, 433 F.2d 409, 411, cert.

denied, 401 U.S. 977; Gelles-Widmer Co. v. Milton Bradley

Co., supra, 313 F.2d 143, 146, cert. denied, 373 U.S. 913:

Mazer v. Stein, supra, 204 F.2d 472, 474 (4th Cir., 1953),

aff’d. 347 U.S. 201; National Comics Publications v. Faw-

cett Publications, Inc., supra, 191 3°.2d 594, 599: Riker v.

General Electric Co., 162 F.2d 141, 142 (2d Cir., 1947).

Since the objects adjudged are cultural commodities. upon

which there is often heated debate in a free society, crea-

tivity requires only a minor quantum of difference from

15 U-iversal Athletic Sales Co. v. Salkeld, supra, 511 F.2d 904; M. M.

Business Forms Corp. v. Uarco, supra, 472 F.2d 1137; Puddu v. Buona-

mici Statuary, Inc., supra, 450 F.2d 401, 402; Dan Kasoff, Inc. v. Novelty

Jewelry Co., 309 F.2d 745, 746 (2d Cir., 1962); Gerlach-Barklow Co.

v. Morris Bendien, 23 F.2d 159, 161 (2d Cir., 1927). See also: McIntyre

v. Double-A Music Corp., supra, 179 F Supp. 160, 161; Dunham v. Gen-

eral Mills, Inc., supra, 116 F.Supp. 152, 154.

32a

Appendix B

others before it. After all, c:ctural progress tends to oceur

incrementally,

By originality, the process of the creation is analyzed,

and the item is not subject to copyrightability unless it

had been constructed by a process requiring independent

skill, labor and judgment of an individual. United States

v. Steffens, supra, 100 U.S. 82, 94 (dictum) ; Roth Greeting

Cards v. United Card Co., supra, 429 F.2d 1106, 1109; Scott

v. WAJIG, Inc., 376 F.2d 467, 469 (7th Cir., 1967), cert.

denied, 389 U.S. 832; Lin-Brool Builders Hardware v.

Gertler, 252 F.2d 298, 301 (9th Cir., 1965); Yale University

Press V. Row, Peterson & Co., 40 F.2d 290, 292 (S.D.N.Y.,

1930); National Institute, Inc. v. Nutt, 28 F.2d 132 (D.

Conn., 1928), af’d. 31 F.2d 236, 237 (2d Cir., 1929). Cf.

Coluinbia Broadcasting System Inc. v. Mclody Recordinas,

Jne.. 44 US.LW. 2026 (N.J. App.); Bergstrom, The Lit-

erary and Artistic Work in Copyright, 20 Bull. C.R. Soe.

67, 68-69.

The trial court in the instant case found that physical

skill was necessary to produce the Snyder bank. From the

recor’, it appears that witnesses for both parties coneede

that the senlptor needed special skil!, training and knowl.

mige, and independent judgment to ereate the mold. “ee

Verer v. Stein, supra, 204 F.2d 472, 473, aff'd. 347 U.S.

201: Smith v. George FE. Muelbach Brewing Co.. 140 F.Supp.

729, 751 (W.D.Mo., 1956). The mold was seu!pted inde-

pendently, feom serateh. There was no slavish or me-chan-

ical copying. Shepiro, Bernstein € Co., Inc. v Miracle Rec-

ard Co., Inc.. 911 F.Supp. 473, 474 (N.D.TIL. 1950). With

this, the requisite of orizinality was satisfied. The district

court went on to find, however, that the Snyder bank was

merely a trivial variation fronrthe basic bank in the publie

domain. Although this court has the power to indepen-

dently evaluate the presence or absence of the creative ele-

33a

Appendiz B

ment, we decline to do so. It is not necessary that we reach

that issue because the Snyder bank satisfies the criteria

for copyrightability in order to qualify as a reproduction

of a work of art, as discussed in the following section.

Ill. “Repropuction or Works oF ArT”

AND CopyRIGHTABILITY

A reproduction of a work of art must satisfy the same

standards for copyrightability as must any work of art.

However, it would be self-contradictory to require that the

reproduction display the same degree of creativity, when

compared to the basic work of art, as if it were a con-

ceptually independent production. The very idea of “re-

production” negates, within copyright law, the idea of an

increment of difference inherent to the concept of “non-

triviality,” necessary to the creativity element. Peter Pan

Fabrics, Inc. v. Dan River Mills Inc., 295 F.Supp. 1366

(S.D.N.Y., 1969), aff'd. 415 F.2d 1067; H. M. Kolbe Co. v.

Armgus Textile Co., 184 F.Sypp. 423 (S8.D.N.Y., 1960), aff'd.

279 F.2d 555 (2d Cir.). That element—creativity—is sup-

plied by the basic underlying work.

It is still requisite that the second element, originality

of process, exist, for a reproduction of a work of art to

merit copyright protection. As indicated above, Snyder has

met his burden in this respect. Since Snyder’s hank is en-

titled to a copyright, the district court erred in holding tliat

Batlin is likely to prevail. On that basis, the court should

have denied the injunction.

IV. Concivusion

At a trial on the merits or, alternatively, at proceedings

before United States Customs Service, the partics are free

to litigate the factual question of infringement.

34a

Appendix B

At this juneture, it should be emphasized that the pro-

tection which attached to Snyder’s work, as with any work,

is limited to its creative increment. The greater the incre-

ment, the more protection is merited thereby.’* Thus Sny-

der is not able to appropriate the ex-lusive benefit of an

article in the public dom:in, by being the first person to

fabricate a slavish copy. In eases such as the instant one, it

is the increment of difference from the basic versier which

is protected. Axelbank v. Roy. sipra, 277 F.2d 314, 317;

Adventures in Good Eating v. Best Places to Eat, supra,

131 F.2d 809, 813, n. 3; Dorsey v. Old Surety Life Ins. Co.,

supra, 98 F.2d 872, 873; American Code Co. Inc, v. Ben-

singer, supra, 282 F. 829, 834; G. P. Putnam's Sons v.

Lancer Books, Inc., 239 F.Supp. 782, 785 (S.D.N.Y., 1965) ;

Continental Casualty Co. v, Beardslcy, 151 F.Supp. 28, 32

(S.D.N.Y., 1957). modified 253 ¥.2d 702, cert. denied, 358

U.S. 816: Smith v. George E. Muehlhbach Brewing Co.,

supra, 140 F.Supp. 729, 731. See Morrissey v. Proctor &

16 This formulation applies equally well to articles using copyrighted

materials as an inspiration or base. An author is not able to indefinitely

prolong his copyright protection by making periodic changes. That per-

son's copyright on the newer version protects only the creative increment

and not the underlying basis after the old copyright expires. 17 U.S.C.

6§ 3, 7. Section 3 provides:

"$3. Protection of component parts of work copyrighted; composite

works or periodicals

The copyright provided by this title shall protect all the copyright-

able component parts of the work copyrighted, and all matter therein

in which copyright is already subsisting, but without extending the

duration or scope of such copyright. The copyright upon composite

works or perio-licals shall give to the proprietor thereof all the rights

in respect thereto which he sould have if each part were individually

copyrighted under this title.”

See Culiga v. Inter Ocean Newspapers Co., 157 F. 186 (2d Cir.), aff'd.

215 U.S. 182 (1909); Heim v. Universal Pictures Co., supra, 154 F.2d

480, 48S, n. 17; Adventures in Good Eating v. Best Places to Eat, supra,

131 F.2d $09, 813; Harold Lloyd Corp. v. Witwer, supra, 65 F.2d 1, 24,

cert. denied, 296 U.S. 669; Andrews v. Guenther Pub. Co., 60 F.2d 555,

557 (S.D.N.Y., 1932).

35a

Appendix B

Gamble Co., 379 F.2d 675, 678 (1st Cir., 1967). Snyder bas

staked out his claim to an adaptation of, or a reproduction

of an object of art within the public domain, as he was en-

titled under the statutes. Batlin, on the other hand, is not

prohibited from using the same basic bank as an inspiration

for its product and from acquiring a copyright. Moreover,

since the basic bank is in the public domain, the bank which

Batlin was prohibited from importing does not infringe

upon Snyder’s design if it avoids pirating those increments

which Snyder added to his original production. There may

be many ways in which the changes in Batlin’s hank can be

clearly distinguished from Snyder’s changes from the basic

bank. Sunset House Distributing Corp. v. Doran, 304 F.2d

251, 252 (9th Cir., 1962); Dymow v. Bolton, supra, 11 F.2d

690, 691; Allegrini v. DeAngelis, 59 F.Supp. 248 (E.D.Pa.,

1945), aff'd. 149 F.2d 815 (3d Cir.); Barton Candy Corp.

v. Tell Chovolate Novelties Corp., 178 F.Supp. 577, 581

(E.D.N.Y., 1959). On the merits Batlin may well suceced

in making this distinction.

Since the district court based its preliminary injunction

upon a finding that the Snyder bank is probably not copy-

rightable, and we hold otherwise, the injunction is vacated

and the cause is remanded for further proceedings not in-

consistent with this opinion.

+e.

Oakes, Circuit Judge (dissenting) :

The majority opinion rendered today eviscerates this

cireuit’s line of cases requiring a modicum of originality

for copyrightability and in doing so opens the door to

copyrights for slavish copies of any object in the public

domain. Incidentally to doing so the majority also totally

disregards the substantial evidence supporting Judge Metz-

ner’s findings that the likelihood that appellants can show

36a

Appendiz B

any input of originality to justify their copyright is small

since change of material and change in size do not alone

render an object copyrightable. The majority opinion

cheapens copyrights (and the concept of copyright protec-

tion) by making them meaningless, supposedly in the name

of “progress in the arts.”' That opinion refers to the

“increment of difference” required to supply copyright-

ability to works of art, but holds, supra at 6371, that the

“very idea of reproduction” per se negates the established

difference exist in a “reproduction” of a work of art when

compared with the work of art upon which it is based.

Simultaneously, while allowing copyrightability here with

no showing below of an “increment of difference,”* and

with no explanation of what features constitute this incre-

ment, the majority goes on to say that the protection here

attached to appellants’ plastic toy bank is “iimited to its

creative increment” or that “it is the inerement of differ-

ence from the basie version which is protected.” Id. This

seems to me to be judicial doubletalk. From the holding as

well as the reasoning by which it is reached, I dissent.

Judge Metzner found that appellee, L. Batlin & Son, Inc.,

had shown through the testimony of its expert and through

cross-cxamination of appellants’ expert that the appellents’

plastic bank did not evince the required “originality” to

give ultimate probability of entitlement to copyright pro-

tection beeause it displayed “merely trivial variations”

from the well-known antique metal bank now in the public

l The constitutional clause authorizing Congress to enact patent and

Arts ... .” U.S. Const. art. I, § 8(8).

2 The majority states, supra at 6370-71, that “[a]Ithough this court has

the power to independently evaluate the presence or absence of the cre-

ative element, we decline to do so. It is not necessary that we reach

that issue ....”

37a

Appendix B

domain from which or from a modern copy of which it

was copied, relying, among other authorities, on Alfred

Bell € Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d

Cir. 1951), and 1 M. Nimmer, The Law of Copyright § 20.3

(1975 ed.). The majority has come to the novel conclusion

that “the requisite of originality was satisfied” merely

because the district court found that “physical skill” was

necessary to create the plastic bank and because, in the

majority’s view of the record, the person hired to seulpt

the plastic mold needed “special skill, training and know!l-

edge, and independent judgment.” Supra at 6370. The

majority evidently views the requirement that the bank be

more than a “trial variation” from the metal bank as part

of the “creativity” requirement for works of art which

does not apply to reproductions of works of art. Unfortu-

nately, it is clear from the cases that the “trivial variation”

standard is the heart of the ortginality requirement for both

categories of works. Judge Metzner was entirely correct

in concluding that appellants’ argument that physical artis-

tic skill was used in the production of the plastic bank fell

short of making the required showing that the work dis-

played substantial variations from the metal bank.

The majority, in fashioning its unprecedented test that

mere special skill and independent judgment suffice for

originality in even the only trivially variant products, ig-

nores the substantial evidence that comparatively small

artistic skill and little independent judgment’ was involved

in making the plastie bank, other than that skill and judg-

ment required to transfer the metal design into the plastic

medium with alterations dictated by the use of a different

medium. The quality of artistic labor involved may he a

relevant indicator of originality, but anpellants’ expert in-

dicated that the time required to create the plastie work

was a day and a half or two at most. Even where courts

38a

Appendix B

have emphasized extraordinary skill and effort as buttress-

ing a finding of originality, these qualities have been

characterized in glowing phrases which are distinetly in-

apposite here. See Millworth Converting Corp. v. Slifka,

276 F.2d 443, 444 (2d Cir. 1960) (fabric designer effort re-

quired one month of work to give three-dimensional color

effect to flat surface); Alfred Bell & Co. v. Catalda Fine

Arts, Inc., supra, 191 F.2d at 104-05 n.22 (imezzotint en-

graver’s art requires “great labor and talent”); Alva

Studios, Inc. v. Winninger, 177 F. Supp. 265, 267 (S.D.N.Y.

1959) (exact miniature of Rodin’s Hand of God required

“great skill and originality”).

The polestar test of originality appeared in Chamberlain

v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir. 1945):

The first question with which we must deal is that of

the validity of the copyright... . Plaintiff {seeking

infringement damages] therefore must lose unless he

has shown that his work contains some substantial, not

merely trivial originality and that defendant sold

copies embodying the original aspects of his work.

This test was further elaborated in the leading case of

Alfred Bell & Co. v. Catalda Fine Arts, Inc., supra, 191

F.2d at 102-03, where Judge Frank said that “{a]ll that

is needed . . . is that the ‘author’ contributed something

more than a ‘merely trivial’ variation, something recog-

nizably ‘his own.’”* This has been echoed in case upon

3 It should, perhaps, be reemphasized that Judge Frank's opinion was

issued in the context of upholding copyrights on mezzotints taken from

paintings; he quotes at length from a description of the engraver's

work, by which effects are produced “by the management of light and

shade . . . produced by different lines and dots... .” means “very

different from those employed by the painter or draughtsman from whom

he copies ....” Alfred Bell ¢ Co. v. Catalda Fine Arts, Inc., 191

F.2d 99, 104-05 n.22 (2d Cir. 1951). A mezzotint by its nature cannot

be a “slavish copy.” Originality found by a trial judge on substantial

evidence was thus upheld.

39a

Appendix B

case in this circuit and elsewhere as a requirement of origi-

nality.* To support a copyright, “a copy of something in

the public domain” must present a “distinguishable varia-

tion.” Gerlach-Barklow Co. v. Morris & Bendien, Inc., 23

F.2d 159, 161 (2d Cir. 1927).

Although the originality requirement may be minimal,

this “does not prevent the court from concluding as a mat-

ter of fact that works may lack even the modicum of

originality required.” Gardenia Flowers, Inc. v. Joseph

Markovits, Inc., 280 F. Supp. 776, 782 (S.D.N.Y. 1968).

Here, the appellants’ plastic bank was admittedly sculpted

into plastic using the more costly, metal Uncle Sam bank

in the public domain as a model. Even if “{oJriginality in

this context ‘means little more than a prohibition of actual

4 See Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d

1092, 1094 (2d Cir. 1974); Puddu v. Buonamici Statuary, Inc., 450 F.2d

401, 402 (2d Cir. 1971); Millworth Converting Corp. v. Slifka, 276 F.2d

443, 445 (2d Cir. 1960); Consolidated Music Publishers, Inc. v. Hansen

Publications, Inc., 339 F. Supp. 1161, 1162-63 (S.D.N.Y. 1972); Pan-

tone, Inc. vy. A.I. Friedman, Inc., 294 F. Supp. 545, 547 (S.D.N.Y. 1968) ;

Gardenia Flowers, Inc. v. Joseph Markovits, Inc., 280 F. Supp. 776 (8.D.

N.Y. 1968).

5 That the plastic bank was copied from the metal bank in virtually

every detail was apparent to the experts, to the trial judge, and also

from the exhibits submitted, to this writer as well; each has the same

number of stars on Uncle Sam's hat, the same number of coat buttons,

the same overall color scheme down to the green umbrella in his left

hand, the same carpetbag opening the same way, the word “BANK” on

the side of the base, an eagle facing right on the front of the base,

etc., etc. It is apparent from a cursory reading of contemporary catalogs

that metal copies of the originally patented but presently public domain

metal banks are ‘on the commercial market without the copyrighting of

any of these products having come to the district court's or to our at-

tention. See, ¢.g., catalog of The Gallery (Amsterdam, N.Y., 1974), at

1, 20; catalog of Carol Ann Gifts (Philadelphia, Pa., 1975) at 12, 22.

Why a plastic rendition of the same idea and same expression is now

entitled to copyright is hard to fathom. Presumably the metal mold-

maker's “special skill, training and knowledge, and independent judg-

ment” are in the same plane as the plastic sculptor’s here involved.

Does the majority opinion therefore permit a copyright to the metal

copyists?

40a

Appendiz B

copying,’ ” I?ushton v. Vitale, 218 F.2d 434, 455 (2d Cir.

1955), here we have just that.

The plastic bank’s variations from the original or the

up-dated version of the original also in the public domain

consist essentially of three: a reduction in size from eleven

to nine inches in height; the use of leaves instead of arrows

in the clutches of the eagle at the base; and the joining of

Uncle Sam’s trousers at the ankle. But even the appel-

lants’ expert conceded that the steps performed in the

copying of the metal bank into reduced plastic size involved

changing some of the designs “in order to fit plastic.” The

district court refused to dignify these changes as an au-

thor’s contribution of more than “trivial variation” and

consigned the plastic bank to the class of items “slavishly

copied” and undeserving of copyright protection. In doing

so, Judge Metzner, an experienced district judge with more

than a passing acquaintance with the arts, was clearly

correct. As he stated,

I am making a finding of fact that as far as I’m

concerned, it is practically an exact copy and whatever

you point to in this [sic] differences are so infinitesimal

they make no difference.

The majority decision, as I have said, cheapens copy-

rights by making them meaningless. If no originality in

terms of variation, but only “physical skill” and “special

training” by the author, need be shown as the opinion

holds, anyone can copyright anything, calling it a “repro-

duction of a work of art.” The majority, as if to back

away from the purport of its decision, then goes on to say

rather ambiguously that the protection afforded by the

“limited to its creative increment.” With no identification

of either original or creative “increment” of variation. the

4la

Appendiz B

protection afforded appellants’ reproduction is theoretically

zero.

The majority has thus’ created an irreconcilable incon-

gruity of implication in its holdings. As Nimmer points

out,

Finally, it should be noted that copyright in a work

of art protects against any substantial copying of the

work per se, while copyright in a reproduction of a

work of art protects only against the copying of the

distinctive features contributed hy the copyright owner

of the reproduction.

1 M. Nimmer, supra § 20.3, at 95. Since the majority holds

that the plastic work qualified as a “reproduction” without

the necessity of possessing “distinctive features,” the work

has no features to be protected, and its copyright is worth-

less. Since the majority also implicitly holds that the skill

necessary to recreate the work in plastic in slightly reduced

size is a sufficiently “original” attribute, it may be that

the majority has given appellants simultaneously total mo-

nopolistie protection against all competitors in the plastic

medium. This is but one example of the bizarre contradic-

tions which flow from the majority’s treatment of the

concept of “non-triviality” as absent in the “originality”

requirement.

One could argne, I suppose, that this decision simply

earries Mazer v. Stein, 347 U.S. 201 (1954), to its logical,

if disputable,* conclusion. But even while that case held

6 Mazer v. Stein, 347 U.S. 201 (1954) (statuette of Balinese dancer

copyrightable despite intended use as base for table lamp), has not

been without scholarly criticism. F.g., Comment, Copyright Protection

for Mass-Produced Commercial Products: A Review of the Developments

Following Mazer v. Stein, 38 U. Chi. L. Rev. 807 (1971). But cf. Note,

Constitutional Limits on Copyright Protection, 68 Harv. L. Rev. 517

(1955).

In recognizing that “the initia] burden of excluding commonplace

42a

Appendix B

that the statutory terms “works of art” and “reproduction

of works of art”—clearly broader than the earlier term

“works of the fine arts’—permit copyright of lamp-base

statuettes, the Court expressly held that the objects to be

copyrightable “must be original, that is, the author’s tan-

gible expression of his ideas.” 347 U.S. at 214. No such

originality, no such expression, no such ideas here appear.

It is, I think, not insignificant that the Mazer majority

cited for this proposition Burrow-Giles Lithographic Co.

v. Sarony. 111 U.S. 53 (1884), which said:

It is, therefore, much more important that when the

supposed author sues for a violation of his copyright,

the existence of those facts of originality, of intellectual

production, of thought, and conception on the part of

the anthor should be proved, than in the case of a

patent right.

Id. at 59-60. Whatever the validity of this as a proposition

of law, the citation to it speaks in clarion tones to the

element of originality missing here, as it is in the majority’s

analysis.

I will admit that some of our fabric design cases have gone

far in upholding on an ad hoc basis copyrights of design

copies on a “minimal quantum of originality,” but this has

been only “where the design printed is itself unmistakably

original” and could be filed itself as a “work of art” under

Section 5(g¢) of the Copyright Act, 17 U.S.C. 45(g). Soptra

Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d

matters in the public domain, such as ideas, from copyright status has

heen left solely to the originality requirement ... [which] does not

perform this function very effectively,” the Chicago writer has suggested

removing the protection of mass-produced commercial articles entirely

from the copyright system. Comment, supra, at 812, 823. I need not

agree with the suggestion to agree with his conclusion that “[i]n any

event ... they [the articles] should be judged on their own merits.”

Id. at 823. The majority decision leaves us no standard for judging.

43a

Appendix B

1092, 1094 (2d Cir. 1974); see ulso Peter Pan Fabrics, Inc.

v. Dan River Mills, Inc., 295 F. Supp. 1366 (S.D.N.Y.),

aff'd, 415 F.2d 1007 (1969). It has not been suggested by

anyone that the original Uncle Sam bank or the modern

metal copy from which appellants’ plastic copy was copied,

can be copyrighted at this late date.

In the forest of copyright cases referred to by the ma-

jority, the progenitor tree of originality has, I fear, been

overlooked. .

I would affirm the grant of the preliminary injunction.

44a

APPENDIX C

Opinion of the United States District Court for the

Southern District of New York (May 12, 1975)

L. Batum & Son, Ivo.,

Plaintiff,

Jerrrey Snyper, d.b.a. JSNY, et al.,

Defendants.

No. 75 Civ. 2036.

~—

Untrep States District Court,

S. D. New Yorx

May 12, 1975

Jacoss & Jacoss, New York City, for plaintiff; Mark

H. Sparrow, New York City, of counsel.

Ostrolenk, Faber, Gerb & Soffen, New York City, for

defendants Jeffrey Snyder, d. b. a. JSNY, Etna Prod-

ucts Co., Inc.; Robert C. Faber, New York City, of counsel.

Paul J. Curran, U. S. Atty., Southern District of New

York New York City, for United States Customs Service ;

Patrick Barth, Asst. U. S. Atty., of counsel.

45a

Appendiz C

Metzner, District Judge: ~

Plaintiff in this action moves for a preliminary injunc-

tion to compel defendants Jeffrey Snyder, doing business

as JSNY, and Etna Products, Inc., to cancel the recorda-

tion of Copyright No. GP95881 with defendant United

States Customs Service, thereby allowing the entry of

‘vaintiff’s product into this country.

At the evidentiary hearing on the motion, the court

was shown a cast iron “Uncle Sam Mechanical Bank,”

admittedly in the public domain, and defendants’ plastic

version of the bank on which they have a copyright. The

latter reproduces the former except that it proportionally

reduces the height from approximately eleven inches to

approximately nine inches with trivial variations. Plain-

tiff manufactures outside the United States an identical

plastic bank which, it is alleged by defendants, infringes

their valid copyright, and which is presently in the process

of being shipped into this country in quantity.

In copyright cases, the standard for granting a pre-

liminary injunction is a clear showing of probability of

success on the merits. Robert Stigwood Group Ltd. v.

Sperber, 457 F.2d 50 (2d Cir. 1972); Concord Fabrics,

Ine. v. Mareus Brothers Textile Corp., 409 F.2d 1315 (2d

Cir. 1969); Uneeda Doll Co. v. Goldfarb Novelty Co., 373

F.2d 851 (2d Cir. 1967).

I have already held in Etna Products Co., Inc. v. E.

Mishan & Sons, 75 Civ. 428 (S.D.N.Y. February 13, 1975)

[See Appendix K, p. 75a, infra], that I find little prob-

ability that defendants’ copyright will be found valid in a

trial on the merits. I reaffirm that opinion here.

The court agrees with the legal proposition advanced

by the defendants that to support a valid copyright as

46a

Appendix C

a reproduction of a work of art, only originality is Te-

quired. Gardenia Flowers, Inc. v. Joseph Markovits,

Inc., 280 F.Supp. 776 (S.D.N.Y. 1968); Nimmer on Copy-

rights, 4 20.3 (1963).

In Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d

99 (2d Cir. 1951), in which the court defined originality

in a reproduction case, the court stated (at pp. 102-03):

“‘Original’ in reference to a copyrighted work

means that the particular work ‘owes its origin’ to

the ‘author.’ No large measure of novelty is neces-

All that is needed to satisfy both the Constitution

and the statute is that the ‘author’ contributed some-

thing more than a ‘merely trivial’ variation, some-

thing recognizably ‘his own.’ Originality in this

context ‘means little more than a prohibition of ac-

tual copying.’ No matter how poor artistically the

‘author’s’ addition, it is enough if it be his own.”

(Emphasis added.)

There is no question that defendant Snyder is an

author within the meaning of the copyright laws. See

Irving J. Dorfman Co. v. Borlan Industries, Inc., 309 F.

Supp. 21 (S.D.N.Y. 1969).

Defendants contend that the concept of originality

embraces a mere copying if it requires artistic skill to

achieve the finished product. The court agrees that in

this ease a degree of physical artistic skill was necessary

to produce the plastic article. What defendant overlooks

is that this artistic skill must contribute to the work. It

must be more than a “merely trivial variation.” which is

57a

APPENDIX I ’

Selected Issues of BNA’s Patent, Trademark and

Reports oF THE Present Case 1v BNA’s Patent,

TRADEMARK AND CoPpyRIGHT JOURNAL

In Issue No. 231 dated June 5, 1975, the District Court

decision in this case is reported on page A-2 and the case

is simply identified in the Table of Contents.

dn Issue No. 253 dated November 13, 1975, the first

Second Circuit Court of Appeals decision appears on page

A-12 of the issue, appears in the Table of Contents and,

most important, is highlighted on the cover sheet.

In Issue No. 276 dated April 29, 1976, the en banc deci-

sion of the Second Circuit Court of Appeals is reported

at page A-1 of the issue, is indicated in the Table of Con-

tents and is headlined as the first item in the highlights

of that issue.

Number 231

. BNA’s Appendix I

HIGHLIGHTS

Commissioner Of Patents Assesses Impact of Patent Revision Measures: In response to

request by Senator Hiram Fong (D-Hawaii), C. Marshall Dann, Commissioner of Patents and

Trademarks says he believes that there would be no problem in accommodating procedures of

Patent Office to provisions of S. 23, but for effect of deferred examination on re

... page A-

workload.

Inclusion Of Total-Sales Royalty Provision In License Is Not Patent Misuse: Insertion of

total-sales royalty provision in licensing agreement, without evidence of illegal “conditioning

of grant of license on payment of royalties for sale of products not covered by patent is not

patent misuse and does not invalidate agreement. ... page A-3

Prior Common Law Right Does Not Destroy Incontestability Of Registration: Prior use

of trademark by distributor of goods will give distributor common law right to use

mark, but manufacturer’s incontestable registration may not now be cancelled ym ge

.+. page

prior use.

Innocent Copyright Infringer Liable For Profit From Infringing Sales: Even though

infringement was unintentional and sale of infringing goods was stopped immediately upon

receipt of notice from owner of design copyright, infringer is still liable for damages in the

amount of net profit from infringing sales. ... page A-5S

Club Owner Is Liable For Copyright Infringement By Lessee’s Band: Catering hall owner

who hires out portion of premises and benefits from infringing activity is liable for copyright

infringement by lessee’s band. ... page A-S

Obligation To Pay For “Basic Concept” Makes Patent Validity Irrelevant: Sales agreement

by which one party relinquishes all claims to “basic concept” of yarn processing apparatus in

exchange for lump sum and percentage of net sales will be enforced regardless of whether

patent on apparatus ever issues or whether patent is valid. ... page A-8

U.S. Patent Agent's Communication Is Privileged: Even though patent agent is not

admitted to practice before any U.S. or state court, his communications with patent applicant

or agent representing applicant in another country are protected by attorney-client privilege.

... page A-10

ROUTE TO

| Ln

seal

PATENT, TRADEMARK & COPYRIGHT JOURNAL jam

June 6, 1975

59a

Appendix I

2 (No, 231)

COPY RIGHTS

Damages: Innocent infringer who cec.vs sell-

~Tng infringing goods immediately upon notice

from copyright owner is liable for damages

and attorney's fees ------+<--+--+-+-+-+-+-+- A-5

Infri ent: Catering hall owner who hires

out portion of premises and benefits from

alleged infringing activity is liable for in-

fringement by lessee's band - - - - ------- A-5

Originality: Copy of work must be more than

trivial variation to meet originality require-

ments for copyright - -----+------+---- A-2

Supreme Court: Petitioner challenges infringe-

ment a mage rulings occasioned by use

PATENT OFFICE

Registration: Examination for registration to

—SUe pin tegumber 9-+--2c- +++ ccs A-23

PATENTS

Attorney ~Client Privilege: Communications of

~ registered patent agent to applicant or his

foreign agent are protected by attorney-client

privilege --------+-+2--+-+-+-++-- -- A-10

Infringement: Court of Claims, rejecting Gov-

- eFament’s claims of license and estoppel,

imposes liability for unauthorized use of pat-

ented invention under 28 U.S.C, § 1498 - - - - - A-12

Legislation: Commissioner of Patents assesses

~ effect of $, 23 and S. 214 on patent system - - - A-17

Misuse: Inclusion of total-sales royalty provi-

~~ Ton in license, without evidence of "condi -

tioning,” is not patent misuse - - - - - - - - - - A-3

Obviousness: Clear showing of obviousness and

Invalidity will not be overcome by evidence

ot commercial success and copying - - - - - - - A-22

Procedure: Jurisdictional requirement of trans-

~~ acting general business in state satisfied by

“ongoing relationship” with in-state licensees- - A-6

Supreme Court: Court denies review of patent

infringement case- ----------+---+--- A-22

Supreme Court: Court urged to decide -vhether

patentee’s ‘can label” licensing progrem vi-

olates antitrust laws --------------- A-10

Supreme Court: Court urged to set aside portion

of Fourth Circuit ruling authorizing restric-

tive amendment of patent applicant's specifi-

i A-10

Supreme Court: Petitioner seeks clarification

of time period for appeal of patent case - - - - - A-10

IN THIS REPORT (PTCY 6-5-75

PATENTS (Cont'd. )

valid: Steering wheel cover that overcomes

problems in crowded art is sufficiently non-

obvious to warrant patent - - - --------- - A-23

Validity: Validity or issuance of patent are ir-

relevant to enforceability of agreement for

Sale of “basic concept” of invention - - - - - - - - A-8

TRADE SECRETS

Freedom of Information: Pharmaceutical Man-

ufacturers Association seeks injunction to

bar disclosure of alleged trade secrets by

of each complaint. « . regulation

The Bureau of National Affairs, Inc. receives a limited number of copies

£ . Or Statute reported herein. These

will be loaned on request. The loan period is one week so that the same

service may be available to all subscribers. Please address Opinions Clerk

Room 506, The Bureau of National Affairs. Inc.. Washington, D.C. 20037.

Food and Drug Administration under new

Freedom of Information Act regulations - - - - - A-l

TRADEMARKS

Incontestability: Mark which has become in-

contestable after five years of continuous use

cannot be cancelled because another had pri-

or common law right to use same mark - - - - - A-4

Infringement: Evidence of “statistically signifi-

cant Confusion” is inappropriate standard for

determining infringement - - - - -------.«- A-!

Supreme Court: Denying certiorari, Court re-

refuses to Clarify rights of trademark owner

in case involving territorial expansion - - ~- - « + A-22

TABLE OF CASES

Allen Homes, Inc. v, Weersing - - - - - - - ~~~ - A-22

Armstrong Cork Co, v. Congoleum Industries,

i A-22

Eastman Kodak Co. v, Studiengesellschaft Kohle -- A-6

Forever Yours, Inc. v. Rapid-American Corp. - - - A-22

Heltra, Inc. v, Richen-Gemco, Inc, - - - - - « - - - A-8

Italian Book Co. v. Palms Sheepshead Country

Club, Inc, -------+-+-+--+-+---- erce- Aad

Kamei-Autokomfort v, Eurasia Automotive Products A-23

L. Batlin & Son, Inc. v. Snyder - ---------- A-2

Mutchnik v, M, S, Willett, Inc, - ---------- A-3

Pharmaceutical Manufacturers Assn. v, Wein-

berger ---+--+------+22+-ce-eee- A-l

Printempo Fabrics. Inc. v. G & G Shops, Inc. --- A-5

Pro Arts, Inc. v. Bell ------+----+-+-+0-+-- A-10

Rel-Reeves, Inc, v, U.S, -------+--0e+-+-- A-12

Rex Chainbelt, Inc. v. Harco Products, Inc. - ~- - - A-10

Rhone-Poulenc, S.A. v. Dann - --------+--- A-10

Roto-Rooter Corp. v. O'Neal ------------ A-1

Splendor Form Brassicre, Inc, v. Rapid-Amer-

ican Corporation- --~-----+-+----+-+-+--- A-22

Vanderhide v. Brown & Sharpe Mfg. Co., Inc. - - - A-10

Vernitron v. Baxter- --------+----++--+-- A-10

Wrist-Rocket Mfg. Co. v. Saunders Archery Co.-- A-4

BNA’S PATENT, TRADEMARK & COPYRIGHT JOURNAL, published every Thursday, except the Thursday

following the Fourth of July and the last Thursday in December, by The Bureau of National Affairs, inc., 1231

25th Street, N.W., Washington, D.C. 20037. Subscription

rate $240.00 per year, $230.00 for renewal. Second

Class Postage paid at Washington, D.C. and at additional mailing offices

60a

Appendia I

NEWS & COMMENT 6-5-75

A-2 (No, 231) (PTC]J)

Roto-Rooter's claim for relief from trademark infringement and unfair competition by

Rotary De-Rooting was denied by the district court on the ground that “there was no evidence

of any statistically significant confusion in relation to the value of ‘business done by plaintiffs

[Roto-Rooter]. . ., that the name ‘Rotary De-Rooting Sewer Service’ was not deceptively or

confusingly similar to the Roto-Rooter name, and that any person exercising ordinary care

could readily distinguish the trade names utilized by the parties. m

Judge Godbold reverses:

[Text} The court appears to have employed an incorrect legal staridard, and, when ex-

amined under correct standards, plaintiffs’ evidence established the likelihood of confusion

required by the law of this circuit. * * *

The plaintiffs presented evidence of actual confusion -~- under World Carpets the best

evidence of likelihood -- by the testimony of four persons who had mistakenly employed

defendants although intending to use the service of plaintiffs. The District Court consid-

ered their testimony “not statistically significant," However, as this court said in World

Carpets, “reason tells us that. . . very little proof of actual confusion would be necessary

to prove the likelihood of confusion," 438 F.2d at 489, Additionally, the court found that

four persons had “simply made an error" which “resulted from carelessness or inadver-

tence rather than from any confusing similarity between either the names or the advertise- -

ments of the parties." The record does not support this finding, either directly or as an

inference. Cross-examination, rather than demonstrating carelessness or inadvertence,

showed that the four persons had made their mistakes because of reliance upon the similar-

ity of defendants’ name to that of plaintiffs’. This is precisely the type of error that 15

U.S.C. § 1114 seeks to protect against. [End Text]

The district court had also found that Roto-Rooter failed to prove secondary meaning,

but Judge Godbold points out that since Roto-Rooter is a registered mark, such proof was

unnecessary.

-0-

MORE ARTISTIC SKILL IN MAKING COPY

DOES NOT RESULT IN ORIGINAL WORK

The use of artistic skill merely to copy a work does not provide the originality required

for copyright purposes. Such artistic skill, says the U.S, District Court for Southern New York,

must contribute something to the work and must result in more than a “merely trivial variation”

of the copied work. (L. Batlin & Son, Inc. v. Snyder, 5/12/75)

Batlin sought the cancellation of Snyder's copyright on an “Uncle Sam Mechanical Bank"

which is a copy of Batlin's bank with only trivial variations,

Judge Metzner begins with the proposition that "to support a valid copyright as a repro-

duction of a work of art, only originality is required." But, he is unable to find the required

degree of originality in Snyder's reproduction:

[Text] Defendants [Snyder] contend that the concept of originality embraces a mere

copying if it requires artistic skill to achieve the finished product. The court agrees that

in this case a degree of physical artistic skill was necessary to produce the plastic article.

What defendant overlooks is that this artistic skill must contribute to the work. It must be

more than a “merely trivial variation," which is all that Is present here. The need for

artistic skill in the execution of the copy is not sufficient. [End Text]

< |

6la

Appendiz I

6-5-75 - (PTC) NEWS & COMMENT ‘ (No. 231) A-3

Without passing on the merits of the decision, the court rejects Sn ‘

, yder's reliance on

pee: of Rodin's Hands of God was found to be copyrightable in that case. To Judge Metzner,

is case is distinguishable because there was a great deal of “complexity” and skill involved

in the reproduction. “Here, no such level of input is reached. "

-O-

INCLUSION IN LICENSE OF TOTAL-SALES

ROYALTY PROVISION IS NOT PATENT MISUSE

The insertion of a total-sales royalty provision in a licensi

ie c ng agreement, without evide

of iliegal “conditioning” of the grant of the license on the payment of royalties for the sale of a

products not covered by the patent, says the Court of Appeals of Maryland, is not sufficient evi-

dence of patent misuse to invalidate the license agreement. (Mutchnik v. M.S. Willett, Inc., 5/7/75)

Mutchnik, the patentee of a metal table slide, granted an exclusive license to Will

ett

which contained a provision calling for the payment of royalties on any slides sold by the

licensee, regardless of whether the items were “those described and claimed in the patent. "

In this suit to enforce the license agreement, the licensee argued that such a provision con-

stituted patent misuse which rendered the agreement illegal.

The trial court refused to enforce the license agreement, because it felt tha

patentee would not have granted the license unless the licensee agreed to the tnctocten af the

total-sales provision, This was considered an illegal “conditioning” of the grant of the license

In addition, the lower court was of the opinion that the patentee's knowledge of the licensee's in-

vestment of its own money in tooling up for the manufacture of the slides indicated an exercise

of "leverage" in insisting on the inclusion of the total-sales royalty provision.

Judge Murphy concludes that there is no patent misuse in this case because the

— of any action by the patentee to condition the grant of the license on any do sg wine

(Text) The record before us is barren of evidence, or inferences properly to be drawn

therefrom, of “conditioning” in the Zenith sense, At the time the eladinn p Arann was

negotiated, no patent had been issued on the Mutchniks' table slide and at most Willett's

bargaining position was influenced by the existence of the pending patent application. There

is, however, no evidence that the Mutchniks refused to license on any basis other than

a total-sales royalty, or overrode any objections which Willett may have had to the provi-

sion, or rejected any alternative proposal which Willett may have advanced. In fact,

there is no evidence to indicate that the total-sales royalty provision was ever a bone of

contention between the parties, much less demanded or insisted upon by the Mutchniks.

That the Mutchniks were aware of Willett's $40,000 tooling-up expenses, and knew that a

substantial part of this expenditure could be lost unless Willett was licensed to manvfacture

the table slide, does not justify drawing an inference that the Mutchniks demanded or in-

sisted, as a condition to their execution of the licensing agreement, that the total-sales

royalty provision be made a part of it. Nor does the inclusion of the total-sales royalty

provision in the licensing agreement constitute evidence of “conditioning” simply because

the Mutchniks made known to Willett that it was negotiating with other parties, and refused

to negotiating with other parties, and refused to negotiate with Willett except through their

attorney. The burden of proving patent misuse - that “conditioning” existed in this case -

was upon Willett; it showed nothing more than that the total-sales royalty provision was

included in the agreement. Under Zenith, such a showing is plainly not sufficient to demon-

strate that Mutchnik used its patent leverage to coerce a promise by Willett to pay royalties

on table slides not practicing the learning of the patent.

““where a very bare minimum number of actions are involved.” ... page A-4

68a

~~ ROUTE TO Appendiz I

Pa 4 2 (No. 253) IN THIS REPORT (PTC) 11-13-75

BNA $ Appendix I ASSOCIA TIONS PATENTS --Cont'd

: “prt Patent Law: New officers elected by urisdiction: Judicial Panel on Multi-

BNA, PATENT TRADEMARK & COPYRIGHT JOURNAL Intellectual and Industrial Property district Litigation clarifies trans-

’ Section of Washington State Bar fer policy in patent cases ............5, A-4

pv) ee a a a ee A-19 reme Court: Court denies review

COPY RIGHT OFFICE of CCPA obviousness ruling ............ A-19

Publications: Circular 38 on “Inter- TRADE SECRETS

nation right Protection” and Misappropriation: Common law of

Circular 38a on “International Copy- ie competition protects trade

A | right Relations of the United States" EE web Cocsedeoececeecseseoece A-5

; : CEE, 968 6cd oe esebes eeseeseeed A-19 | TRADEMARKS

: ie ‘ ; COPY RIGHTS om , Antitrust: Tenth Circuit overturns

Saw Common Law: New ‘ornia law ng that Shell Oil Co. tied use

Number 253 TY. —— HIG HLIGHTS November 13, 1975 provides that artist who sells work of its trademark to purchases of

y » j — j retains right to reproduce eee ee A-16 gasoline; court says trademark

i Se - | Common Law: Common — tay am is not “separate product” for

. ’ nor furniture des ongs CURR OUEPEENR tcc cc cece ecccecces A-18

CAI10 Says Trademark And-Goods It Identifies Are Not Seperate Products: U.S. Court of to party who commissions design; iacoer Mneeted GH, anameien

Appeals for Tenth Circuit says Si.2il Oil Company’s trademark is not “separate product” from but copyright is destroyed when Coen on to registration of near-

gasoline which it identifies, and accordingly Overturns district court ruling that Shell was guilty pare noha agi — - ht. eee ae ly ey Tit. on ee eeeeees A-11

of illegal tie-in. ... page A-18 Film Piracy: Federal judge sentences oppositions affected by

“film pirate to three months in jail; delays in printing Trademark

E levys $20,000 fine ..... eee ececeres A-19 TT wit henh ss caseee.e A-19

: Validity: ae a divided on Registrability: “In commerce”

“ ” : . 1 measure of creativity necessary requirement for use of trade-

In Commerce Requirement Must Be Met By Goods, Not Acts of Customers: for copyright. Majority says copy- mark must be satisfied by goods,

Trademark applicant whose business operations are effectively confined to single state by right a — ~ ah > + A not by acts of customers who

: es ee : “ artis v w t Ts to cross state lines ............ A-l

Federal Meat Inspection Act, but w nevertheless maintains that his goods are “in | of creativity since this requirement Unfair Competition: Suit on invalid

commerce” under Lanham Act because his customers cross state lines, is denied federal 4 is met by “underlying work"; dis- registration treated as infringe -

‘ : A-l sent says majority's decision is ment suit based on unregistered

registration. - ++ Page “judicial doubletalk” that “cheapens mark; “Winston Lights” does

copyrights” eosreeeereeeeeoeeeeeeeeeee A-12 not compete unfairly with “Marl-

MEETINGS boro Lights” low-tar cigarettes ......... A-6

re ae Seepas Commission on New Tech- ISEMINARS :

Second Circuit Bitterly Divided on “Creativity” Necessary For Copyright: “Creativity” is nological Uses of ore ay Works ane Patent Law: George Washington

; ivity will meet again November 19)... - +++ +++ . University to present ten session

not required to obtain copyright for reproduction of work of art. Element of creativity, says INTERNATIONAL AGREEMENTS enusee on “Pansat Law tor Gagt-

majority, “is supplied by the basic underlying work.” Dissent says majority opinion Paris Convention: German Democratic msore end Getemtiots” . 6... ccc ccc cee: A-19

eet — «as : «i al C ightabili ~~Republic accedes to Stockholm revi- Patents: “Patents at the Crossroads”

eviscerates this circuit's line of cases requiring a modicum of originality for opyrigh a ility sean of tenn Geaeatien, Geen <a o stench an foloween

and in doing so opens the door to copyrights for slavish copies of any object in the public oem Ten sa, a A-19 to Luxembourg Convention meet-

domain.” ae A-12 PATENTS OE cone Wa ueebesecovescced esse A-19

page Availability for License: O.G. pub- TABLE OF CASES

Tishes list of several hundred DT, covesceeceecsencecees A-19

patents available for licensing under a SD, Be PEED cc cc ccccccecees A-l

: : “ . Xerox-FTC consent decree ......+.+++- - Crucible, Inc. v. Stora Kopparbergs

Formula Not Generally Known And Not Readily Discernable is Trade Secret: Formula Discovery: The Judicial Panel on Multi- BempmtagO AB nc ccc ccc cescssccecs A-8

tion, discovered with difficulty and not generally known nor readily discernible, which had aecricn Litigation cannot dictate >. Gustave v. Zuppiger ........----+ee--- A-S

potential commercial value, which was only partially revealed and then in the context of a ) = ta ka —- peer acts 4 — Se v. epee + a teeeeee sees A-12

confidential relationship, and which was otherwise protected in every reasonable manner,” is ’ jurisdiction: Conduct of business in i eee ate tak ee oh a.b es A-10

protected under North Carolina common law of unfair competition against mis- prem —— ae a —. — ae Se i ee: eae A-4

approrpiation. page A-5 over foreign corporation under Pennwalt Corp. v. Center Laboratories,

Pennsylvania long arm statute = ....----+++> A-8 i hanes60s 6 a6 ebkeesason ses A-ll

Philip Morris, Inc. v. R.J. Reynold

THREESO GR. coccccsceve cece seeehun A-6

JPML Clarifies Transfer Policy In Patent Cases: Possibility of collateral estoppel will te hn gt gg Sle i el dalla ai

militate against transfer of patent case where another action is “proceeding expeditiously”’ or DUE, §e608 + vedvedciocnses . A-S

The Bureau of National Affairs, Inc. reccives a limited number of copies

of each complaint, opinion, regulation, or statute reported herein These

will be loaned on request. The loan period is one week so that the same

service may be available to all subscribers. Please address Opinions Clerk.

Room 506, The Bureau of National Affairs, Inc., Washington, D.C. 20037.

BNA’S PATENT, TRADEMARK & COPYRIGHT JOURNAL, published every Thursday, except the Thursday

following the Fourth of July and the last Thursday in December, by The Bureau Conan 6 Affairs, inc., 1231

Street Washington 20037. ipti $252.00 q . ‘or renewal. Second

“Sak .

64a

Appendiz I

A-12 (No, 253) NEWS & COMMENT (PTCJ) 11-13-75

We must agree with [opposer] that [applicant] should not be permitted to register a

mark that is nearly identical [The only difference in the letter arrangement of the two

marks involves the transposition of the letters "ES" in ALLEREST to "SE" in ALLERSET. ]

to appellant's mark and use that mark in the same general field of allergy medicines to

obtain the benefit of appellant's good will, See Meyer Chemical Co, v. Anahist Co.,

46 CCPA 784, 263 F, 2d 344, 120 USPQ 483 (1959).

Furthermore, in determining likelihood of confusion, the goods described in appellee's

application for registration must be compared with those enumerated in the registration

of the opposer's previously registered mark, * * * In this connection, we note that the

goods described in opposer's registration are "medication for relief of sinus passage

congestion, allergies and hay fever." In our opinion, this description includes not only

over-the-counter non-prescription items such as those which appellant presently pro-

duces and sells, but also presc on medications for the relief of sinus passage con-

gestion, allergies, and hay fever, [End Text]

Although physicians as a group may be sophisticated purchasers, Judge Baldwin thinks

this consideration is "more than outweighed in importance" by a need to avoid likelihood of

confusion where both products are used in the same general field, i,e, the treatment of

allergies.

The Dissent

Speaking for himself and Judge Rich, Judge Miller's does not agree that the two marks

are “nearly identical," He feels that they are “clearly not similar" in sound and m

Though both marks include the prefix "Aller," generically indicating allergies as the field

of use, the suffixes differ. Appellant's suffix connoting "rest," or “arrest” from allergy,

whereas appellee's suffix "set" describes to doctors a prescription allergen injection set.

The dissent views medical doctors as the primary channel of trade through which the

parties’ goods are marketed, since they purchase or prescribe and use the set to treat their

allergy patients. No evidence is adduced to show that physicians are likely to be confused

about the source of applicant's products, In fact, Judge Miller asserts that because of their

professional training and experience, physicians would be likely to concentrate on the mean-

ings of the marks and unlikely to be confused, As for patient confusion, this is unlikely since

purchase is limited to the prescription provided by his medical doctor,

e@e

SECOND CIRCUIT BITTERLY DIVIDED ON

“CREATIVITY” NECESSARY FOR COPYRIGHT

Parties trying to cash in on the Bicentennial with toy banks modeled after "Uncle Sam"

have set off some spectacular copyright fire

This text is long and has been trimmed here. Open the source document for the complete record.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.