# Petition — Snyder v. L. Batlin & Son, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_0240%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1976 - **Citation:** 429 U.S. 857 ## Text Supreme Court, U. & D ; | 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 eS 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. V. 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 14 22 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 la 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, v. 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. 2 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. 3 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? 4 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.” Copyright Act, Sec. 5, 61 Stat. 652, 17 U.S.C., See. 5 (1947) : “The application for registration shall specify to which of the following classes the work in which copyright is claimed belongs: . . . “(¢) 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 5 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) 6 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.” 7 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- 8 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, 9 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 Copyright Clause of the Constitution, Article I, Section 8, Clause 8, as interpreted in decisions of the Supreme Court and the other Federal Courts. The Decision by the 10 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, copyright would be denied to pictures which ap- 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. 11 758, 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. 12 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. copyright cannot be used to preclude others from pg 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). 13 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 14 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 15 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 copyright owner as opposed to the protection granted 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: a 16 “The novelty of the art or things described or ex- plained has nothing to do with the validity of the copyright.” 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 17 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... . 2 18 “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]. 19 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. 20 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 21 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 22 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 copyright protection. 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 23 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”. 24 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. 25 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 26 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 4 No. 1249—September Term, 1975. (Submitted January 19, 1976 Decided April 12, 1976.) En Banc Docket No. 75-7308 or L. Batu & Son, Inc., Appellee, v. JEFFREY Snyper d/b/a J.S.N.Y. and Erna Propucts Co., Inc., Appellants. al Before: Kaurman, Chief Judge, and Fernserc, MaNnsFIzeLp, Muuuican, Oakes, Trmpers, Gurrern, Van GRAAFEILAND, and Mesxr1, Circuit Judges. +o 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] 2a 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. 2 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 copyright. The district court held, 394 F. Supp. 1389 (S.D. 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 3a 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. 4a 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’ copyright void and for damages for unfair conipetition and 5a 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, 6a 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 7a 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. 8a 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 9a 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.” 4 « 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. } d y ; : : : : | { | 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 copyright protection. . . .” Alva Studios, Inc. v. Win- 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, v. 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. +o 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 copyright and interfering with the appellee’s importation 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. ip —_> 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 copyright. The District Court for the Southern District of New York (Metzner, J.), based its action granting the injun-tion vpen a finding that the object of the purported copyright was not entitled to that protection. We reverse, 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. ©1735. In the spring of 1974, Snyder procured a sculptor 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 L. Batum & Son, Ivo., Plaintiff, v. 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 Copyright Journal 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 Copyright © 1975 by THE BUREAU OF NATIONAL AFFAIRS, INC., WASHINGTON, 0.C. 20037 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 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 . 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 Copyright © 1975 by THE BUREAU OF NATIONAL AFFAIRS, INC, WASHINGTON, D.C. 20037 = ame Be een OS —- “ aiaeemee i, - Copyright © 1975 by THE BUREAU OF NATIONAL AFFAIRS, INC, WASHINGTON, D.C. 20037 “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 fireworks at the U.S, Court of Appeals for the Second Circuit, In the face of a scathing dissent accusing the court of "judicial doubletalk" that “cheapens copyrights," the majority holds that “creativity™ (i.e., something more than a trivial distinction) is not required to obtain a copyright for a ion of a work of art. Creativity, says the majority, “is supplied by the basic underlying work,” (L. Batlin & Son, Inc. v. Snyder, 10/24/75) The copyright owner (Snyder) had a sculptor make a plastic, scaled-down replica of a cast iron Uncle Sam bank that passed into the public domain in the early 1900's, When a com- petitor (Batlin) began to import allegedly infringing banks, the copyright owner threatened suit and also had the U,S, Customs Service bar entry of the competitor's banks into this country. Copyright © 1975 by THE BUREAU OF NATIONAL AFFAIRS, INC , WASHINGTON, 0.C 20037 65a ’ Appendiz I 11-13-75 (PTCJ) NEWS & COMMENT The competitor filed a declaratory judgment action seeking to invalidate the copyright, and also requested a preliminary injunction barring enforcement of the copyright and lifting the Customs Service ban on entry of its goods. The U.S. District Court of Southern New York granted the preliminary injunction because it felt that the competitor was likely to prevail on the merits of its copyright invalidity claim. While acknowledging that some artistic skill was required to make the replica, the court said that such skill did not “contribute” to the work and did not amount to more than a “merely trivial variation." See 394 F, Supp. 1389, 187 USPQ 91 (SDNY 1975), 231 PTC] A-2. (No. 257) A - 13 The Second Circuit reverses. (Judge Meskill writes the majority opinion on behalf of himself and Judge Van Graafeiland; Judge Oakes dissents.) the “fact that an idea is in the pub- lic domain does not render an expression of that idea uncopyrightable, " says the majority. "We must determine whether Uncle Sam can ever attain the status of art, or forever be con- demned to an ignoble and unprotected commercial status, " The majority says that copyrightablity must be assessed in light of 17 U.S.C. §5 (g) (“works of art") or 17 U.S.C. $5 (h) (“reproductions of a work of art"), Though registration was obtained under §5 (g) in this case, and registration under §5 (h) might have been more ap- propriate, “a mistake in designation of the appropriate 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," Thus, “the instant appeal presents the question of * * * whether this reproduc- tion of a work in the public domain is a fit subject for protection under the copyright laws as a work of art, or as a reproduction of a work of art." After a lengthy discussion, the majority declines to rule on the “work of art" question, but concludes that the copyright is valid as a “reproduction of a work of art." According to the majority, the objective of the copyright laws is to insure “progress now." If necessary, the parties can “litigate later." A copyright is “akin to a notice or a claim for priority amongst creditors"; the "claims can be staked out rapidly so that articles of culturally perishable con- tent can rapidly enter the stream of commerce," While it may be easy to "stake" or file the claim, however, different standards govern enforcement. “[T]he standards relating to in- fringement [are] much higher than those relating to mere copyrightability. " Directing its attention to c alone, the majority says the standards are “minimal,” at best. “Art, for the purposes of copyright law has two requisite elements: creativity and o -" The issue of whether or not an object is a work of art “narrows to a judgment as to fact, and not a judgment of artistic sensibility." [{. 2xt] Creativity can be determined from observing the object itself in comparison with others; originality can be gauged from evaluating the process by which the object was made, Creativity in this context means only that the ojbect 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 copy- rightability. * * * There have been some cases to the contrary, however. * * * This apparent conflict can be rationalized, however, to mean that the degree of novelty required for patentability need not be reached for copyrightability. * * * By originality, une Bepecss of creation is analyzed and the item is not subject to copy- rightability unless it constructed by a process requiring independent skill, labor and judgment of an individual. Copyright © 1975 by THE BUREAU OF NATIONAL AFFAIRS. INC WASHINGTON, 0.C 20037 66a Appendiz I NEWS & COMMENT PTCJ) = 1i-13-75 The trial court in the instant case found that physic~! skill was newessary to produce the * * * bank. From the record, it appears that wituesses for both parties conceded that the sculptor needed special skill, training and knowledge, and independent judgment to create the mold.* * * The mold was sculpted independently, from scratch. There was no slavish or mechanical copying. * * * With this, the requisite of originality was satisfiea. The district court went on to find, however, that the * * * bank was merely a trivial varia- tion from the basic bank in public domain. Although this court has the power to indepen- dently evaluate the presence or absence of the creative element, we decline to do so. It is not necessary that we reach that issue because the * * * bank satisfies the criteria for copyrightability in order to qualify as a reproduction of a work of art * * *. A- 14 (No. 253) 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 repro- duction display the same degree of creativity, when compared to the basic work of art, as if it were a conceptually independent production. The very idea of “reproduction™ negates, within copyright law, the idea of an increment of difference inherent to the con- cept of “nontriviality, ’ 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. Supp. 423 (S.D.N.Y., 1960), aff'd. 279 F.2d 555 (2d Cir.). That element -- creativity -- is supplied by the basic underlying work. It is still requisite that the second element, originality of process, exist, for a re- production of a work of art to merit copyright protection. As indicated above, [the copy- right owner] has met his burden in this respect. Since [the] bank is entitled to a copyright, the district court erred in holding that [the competitor] is likely to prevail. On that basis, the court should have denied the injunction. ? * + At a trial on the merits or, alternatively, at proceedings before United States Customs Service, the parties are free to litigate the factual question of infringement. [End Text] Having dispensed with any additional “creativity” requirement (beyond that supplied by the underlying work) for a reproduction of a work of art, the majority emphasizes that the protection available to the copyright owner with regard to infringement will nevertheless be limited to the “creative increment” he has supplied; the “greater the increment, the more protection is merited thereby." {Text} At this juncture, it should be emphasized that the protection which attached to {the copyright owner's] work, as with any work, is limited to its creative increment.* ** Thus, [the copyright owner] is not able to appropriate the exclusive benefit of an article in the public domain, by being the first person to fabricate a slavish copy. In cases such as the instant one, it is the increment of difference from the basic version which is pro- tected.* * * [The copyright owner] has staked out his claim to an adaptation of , or a re- production of an object of art within the public domain, as he was entitled under the statutes. [The competitor] 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 [the competitor] was prohibited from importing does not infringe upon [the copyrighte’'] design if it avoids pirating those increments which [the copyright owner] added to his original production. There may be many ways in which the changes in [the competitor's] bank can be clearly distinguished from [the copyright owner's] changes from the basic bank.* * * On the merits [the competitor] may well suc- ceed in making this distinction. [End Text] Copynght © 1975 by THE BUREAU OF NATIONAL AFFAIRS, INC, WASHINGTON, D.C 20037 67a Appendiz i NEWS & COMMENT (No. 253) A-15 Dissent “The majority opinion, " says Judge Oakes, “eviscerates this circuit's line of cases re- quiring a modicum of originality for copyrightability and in doing so opens the door to copy - rights for slavish copies of any object in the public domain." He agrees with the trial court that the “likelihood * * * is small" that the copyright owner could show “any input of originality * * * since change of material and change in size do not alone render an object copyrightable. In short, he says, the majority opinion “cheapens copyrights (amd the concept of copyright protection) by making them meaningless. " [Text] [the majority] refers to the “increment of difference” required to supply copy - rightability to works of art, but holds * * * that the "very idea of reproduction" per se negates the established copyright law requirement that a nontrivial increment of difference exist in a “reproduction” of a work of art when compered with the work of art upon which itis based. Simultaneously, while allowing copyrightability here with no showing below of an “increment of difference, " and with no explanation of what features constitute this increment, the majori’y zoes on to say that the protection here attached to appellants’ plastic toy bank is “lirsited to its creative increment” or that “it is the increment of --— ==! 29, 1976 Second Circuit Declares That Trivial Distinctions Can't : Second Circuit previously split 2-1 in holding that “creativity” (something more than trivial distinction) was not required to obtain copyright for reproduction of work of art Now, following rehearing en banc, court holds (8-1) that “to support a copyright there must be at least some substantial variation, not merely ¥ trivial variation.” page A-| Patent Use On Behalf of U.K. Vests Jurisdiction In Court Of Claims: U.S. Court of Claims rejects Government's argument that court lacks jurisdiction to consider patentee’s charges of infringement since United Kingdom ultimately footed bill for communications satellite program. Infringing acts were “undertaken as much for the benefit of the U.S. as for the U.K.” page A-7 Substantiality, Not Size Of Patent Rights, Determines Tax Treatment: Patentee who transfers “undivided interest” in “all substantial rights” to his patent is entitled to long term capital gains treatment of proceeds even though he transferred as little as 1% of his interest. page A-4 Marked Disparity In Prices Does Not Avoid Trademark Infringement: Infringement cannot be avoided by selling infringing item at price marked below that of trademarked item. Public confusion is not avoided “because the plaintiff caters to the so-called rich consumer and the defendant to the ‘poorer consumer’ and the two are not in the same stream of commerce.” page A-10 New Japanese Law Sanctions Patents On Chemical Compounds: Revision of Japanese industry property 'sws now makes it possible to obtain patents on chemical compounds and ‘ compositions, including medicines and foodstuffs. Revised laws, effective January |, govern patents, utility models, designs, and trademarks. page A-13 Copyright © 1976 by THE BUREAU OF NATIONAL AFFAIRS, INC., WASHINGTON, D.C. 20037 ROUTE TO 70a Appendiz | 2 (No. 276) IN THIS REPORT (PTC) Suits: Polaroid sues Kodak a tear aTsinging Instant Trademarks Andy Loosens " —_ A rk Tying” abetracted.....-+- . A-16 pe mn agg at SEAT ISLEEEE "Keith B. Redd doing business as —_ , Interferences: Applicant tay toa Aba jo ¥q Shell i} Company’ ¢ ~~“claims from patent must eo abstra cere cee seers eg egeerasre A-16 to make and use invention count ..sees “Reacting to Tradema Chemical compounds may be Developments in Asia” abstracted .....- A-16 under new japanese law .....++> Reacting to Trademark Developments in Wriediction: Court of Claims rejects Gov- Latin America” abstracted .....++++4+ A-16 catiengee 0 Ee beieciatee . : Makiag @ over Tie vi cwmaion of Reseed in © Fyasseding holds that U.S. participation in defense Before the TTAB” abstracted .......-.¢ A-~ 16 satellite program created potential “Trademarks and the Antitrust U.S. liability even though United King- Complete Compatibility--No Davorce y dom ultimately peid for program .....-- Needed” abstracted .....+.+- etececcece - A-16 Supreme Court: Court denies review of COPYRIGHTS Patent CASES... 1 eee cece eer eeeee ° Infr : Multidistrict panel transfers es to clarify status of “ copyright infringement “eevee * “ene eve . suits for common pretrial Venue: That Gefendant caused demonstrations proceedings ..seeeeeereresees oce A-lM4 of operable infringing articles at trade ms: Luxembourg and Kenya shows held sufficient infringing act to rat: Onogram convention ....++++-+ A-18 establish venue eee eeeeeeee **e . Validity: Second Circuit, en banc, declares Patent Law: Practising Lew Institute to that validity of copyright for reproduction olfer patent ber review and patent of work of art depends on existence antitrust workshop ......+- eeveccece of “substantial” variations over SEMINARS work copied ....+-eeeeeeeeeeree ° A-1l Crosuromes, Costieme: AEA leinse INTELLECTUAL PROPERTY scuss Information Act, iepenese Lee Revision of Japanese Privacy Act, —o propert law took eereneneeeeneeenenee **f py ety eee TTT TT eee A - 13] TRADE SECRETS LEGISLATION Misa : Court of Claims adopts T Senate compromise 's recommended opinion hold- post of Science ing known idea is not susceptible to Advisor to President .......++-> cove A-15 protection as trade secret ....+++++++ PATENT AND TRADEMARK OFFICE TRADEMARKS Trademark Rules: PTO announces changes Infr : Trademark infringement is n for trademark cases. A-16 not av by disparity in price ....++- PATENTS TRADEMARKS Assignments: Tax treatment of gain from : Proof of actual use of trademark Tenaler of undivided isterest in requ by new Japanese law .....+++-+ patent depends on substantiality of TABLE OF CASES rights transferred, not size or Anne Klein Studio v. Hong Kong Quality extent of interest. ...-++eeeeeeeeee A-4 Knitters, BOB. ceoeeeeeeeeseeeeeece DeMinimis: Court of Claims adopts opinion B & J Manufacturing Co. v. FMC Corp. .... of trial judge invoking de minimis doctrine Bolkcom v. Carborundum Co, .....-.++++-+ in holding single exper use Cali v. Japan Airlines Co,., see ee eeee patented invention, later abandoned, Bickmeyer v. Commr. eoccccscccecs ° not infringing ...+-+++e+e+eeeeeee A-18 “The Exorcist Copyright Infringement : Court of Claims adopts opinion Litigation, In re... - eee ee eeeee ese | judge rejecting government Finney v. U.S. wee cece eee ereceeeeee defense of license and estoppel! .....+- A-18 Frodge v. U.S. 2. -e eee eeeeceeeeees ° For : Jurisdiction over Hughes Aircraft Co, v. U.S. «..-+++++ oe or is based on L. Batlin & Son, Inc. v. Sayder “ee eee eee “solicitation plus” rule; solicitation Meat Systems Corp. v. Ben Langen-Mol, in “any substantial degree” supports Bae. coc ccccccccccces eccccccces conclusion of doing business .......++-+ A-ll Rel-Reeves, Inc. v. U.S. «ees eeeeeeces : Manufacturer's representa- Snitzer v. Etzel ......eeeeeee08 TTT ve merely solicits orders for Steelcase Inc. v. Emeco Industries, Inc. .... acceptance by his principal is not Wallace Clark & Co., Inc. v. Acheson direct infringer eeeeoeeveeeeeeee “ne © A-18 Industries, Inc. “eer veeneeeeneeeerernvree of cach complaint. opimon The Bureau of Nationa! Affairs, Inc. receives a limited number of copres . . regulation > ao eaanate agen Suseta, Tae will be loaned on request. The loan period is one week so that 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 Thursdey following ‘ourth last Thursday in December, by The Bureau of National Affairs, inc., 1231 7 os 4 hy Subscription rate $252.00 per year, $242.00 for renewal. Second 25th Street, N.W., Washington, D.C. 20037. Class Postage paid at Washington, D.C. and at additional mailing offices. Copyright © 1976 by THE BUREAU OF NATIONAL AFFAIRS, INC., WASHINGTON, 0.C. 20037 4-29-76 A-15 A-18 ‘ = oo ‘ -oveo e266 35 2a a a > >>> FP rrr > P>> 2 @ ‘ s*se 4-29-76 Tla Appendiz I (No, 276) A-1 NEWS & COMMENT BNA’s PATENT, TRADEMARK & COPYRIGHT JOURNAL SECOND CiRCUIT DECLARES THAT TRIVIAL DISTINCTIONS CAN*T SUPPORT COPYRIGHT A dramatic turnabout on an important copyright issue has taken place in the U.S. Court of Appeals for the Second Circuit. The court had previously split 2-1 in holding that “creativity” (something more than a trivial distinction) was not required to obtain a copyright for a reproduction of a work of art, 253 PTC] A-12. Now, however, following a rehearing en banc, the court holds (8-1) that “to support a copyright there must be at least some substantial variation, not merely a trivial variation.” (L. Batlin & Son, Inc. v. Snyder, 4/12/76) Background Previously, Judge Meskill had written for the majority; Judge Oakes had filed a blistering dissent the majority opinion as “judicial double-talk" that “cheapens copyrights." Switching roles, Judge Oakes now writes for the majority, and Judge Meskill finds himself the lone dissenter. (“many that are first shall be last; and the last shall be the first." Matthew 19:30.) The dispute involves toy banks modeled after “Uncle Sam." The copyright owner (Snyder) had a sculptor make a plastic, scaled-down replica of a cast iron Uncle Sam bank that had passed into the public domain in the early 1900's. When a competitor (Batlin) began to import allegedly infringing banks, the copyright owner threatened suit and also had the U.S. Customs Service bar entry of the competitor's banks into this country. The competitor filed a declaratory judgment action seeking to invalidate the copyright, and also requested a preliminary injunction barring enforcement of the copyright and lifting the Customs Service ban on entry of its goods. The U.S. District Court for Southern New York granted the preliminary injunction because it felt that the competitor was likely to prevail on the merits of its copyright invalidity claim. While acknowledging that some artistic skill was required to make the replica, the court said that such skill did not “contrib- ute” to the work and did not amount to more than a “merely trivial variation.” See 394 F. Supp. 1389, 187 USPQ 91 (SDNY 1975), 231 PTC] A-2. The Second Circuit reversed, saying “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 conceptually independent production.” “Creativity,” said the majority, was “supplied by the basic underlying work. “ PF, 2d » 187 USPQ 721 (CA2 1975), 253 PTC] A-12, The court subsequently agreed to reconsider the case en banc, 259 PTC] A-19, Decision on Rehearing According to Judge Oakes, “the requirement of originality [cannot] be satisfied simply by the demonstration of ‘physical skill’ or ‘special training’ “in the execution of a reproduction of a work of art. “A considerably rer ere of skill is required, true artistic skill, to make the reproduction copyrightable. refore, the district court's decision is affirmed and the previous Second Circuit ruling is repudiated. Whether a copyright is sought for a work of art (17 U.S.C. § Xg)) or for a reproduction of a work of art (17 U.S.C. §S(h)), the “requirement of substantia! as to trivial variation” is the same, says Judge Oakes. “While the quantum of originality * * * may be modest indeed * * * we are not inclined to abandon that requirement, even if * * * we could do so.” Copyrignt ©1976 by THE BUREAU OF NATIONAL AFFAIRS, INC.. WASHINGTON, 0.C. 20037 A-2 (No. 276) NEWS & COMMENT (PTC]) 4-29-76 To warrant protection, a "reproduction must contain ‘an original contribution not present in the underlying work of art’ and be more than a mere copy.” If there is 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." [Text] Appellants [copyright owners] rely heavily upon Alva Studios, Inc. v. Winnin- ger, [177 F. Supp. 265, 123 USPQ 487 (SDNY 1959)] the “Hand of God" case, where the court held that "great skill and originality [were required] to produce a scale 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 "[i]nnumerable planes, lines and geometric patterns . . . interdependent in [a] multi-dimensional work." Id. Originality 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 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 themselves have pointed out, there are a number of trivial differences or deviations from the original public domain cast iron bank in their plastic reproduction. Thus concededly the plastic version is not, and was scarcely meticulous - ly produced to be, an exactly faithful reproduction. Nor is the creativity in the under- lying work of art of the same order of magnitude as in the case of the "Hand of God." Rodin's sculpture is, furthermore, so unique and rare, and adequate public access to it such a problem that a significant public benefit accrues from its precise, artistic reproduction. No such benefit can be imagined to accrue here from the "knock-off" reproduction of the cast iron Uncle Sam bank. Thus appellants’ plastic bank is neither in the category of exactitude required by Alva Studios nor in 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 copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopo- lizing 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 copy ble, ‘must be original, that is, the author's tangible expression of his ideas."' 347 U.S. 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 copy- right status very effectively. See Comment, Copyright Protection for Mass Produced Commercial Products: A Review of the Developments Following Mazer v. Stein, 28 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. [End Text] Judge Meskill Dissents Judge Meskill remains convinced that the copyright owner “has contributed substantial- ly more than a merely trivial variation." The “independent sculpting of the mold" and the “aggregated differences in size and conformation” are sufficient to warrant copyright protec- tion in his estimation. Copyright © 1976 by THE BUREAU OF NATIONAL AFFAIRS, INC.. WASHINGTON, D.C. 20037 | 73a Appendiz | 4-29-76 (PTC) NEWS & COMMENT (No. 276) A-3 [Text] 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 copy - rightable, 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 determination of whether the differences are trivial. * * * [Even an inadvertent variation can form the basis of a valid copyright. After the fact speculation as to whether [the copyright own- er] 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 » including shape and expression of face; design of the clothing (hat, tie, shirt, collar, trouser); detail around the eagle figure on the plat- form; placement of the umbrella; and the shape and texture of the satchel. Granting * * * a copyright protecting these variations would ensure only that no one could copy [this] particular version of the bank now in the public domain * * *, In Alva Studios, supra, 177 F. Supp, at 267, where the author produced no distinctive variations of his own in ing the Rodin sculpture, the court still found that the reproduction was copy- rightable and that infringement was possible; although mere resemblance would not justify a finding of infringement where the principal elements 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 encouraging individual effort t protection. The relatively low standard of originally required for copyrightability is derived from this purpose. The objective is 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 industries and fields naturally subject to great flux. [End Text] -@- DISCLOSURE MUST BE ENABLING TO ALLOW PARTY TO MAKE COUNTS An applicant who seeks to copy claims from another's patent must do more than dis- close the broad concept of the invention, Applicant's specification must disclose not only the composition of the claimed laser glass of the counts, says the U.S. Court of Customs and Patent Appeals, it must also be sufficient “as an enabling disclosure of how to make and use the invention of the counts." (Snitzer v. Etzel, 4/8/76) The appellant, Snitzer, copies the counts from appellee's patent. Count | follows: [Text] In a laser, a solid luminescent sensitive element of optical regenerative con- figuration and consisting essentially of a clear glass activated with trivalent ytterbium ions to absorb optical pumping energy in the near infrared region at wave-lengths of from 914 to 974 mu and exhibit stimulated emission of radiation in the near infrared region in a waveband of about 6 mu width which has its optical center at 1,015 microns. (End Text} In an earlier in the case, the CCPA held (59 CCPA 1242, 465 F.2d 899, 175 USPQ 108 (1972)) that Snitzer's disclosure describes the host material (clear glass) and the activating elements (trivalent ytterbium) of the counts, but remanded the case to consider whether Snitzer's disclosure described the terminal portion of the counts relative to pumping energy and radiation emission wavelengths, and whether the disclosure would enable one skilled in the art to practice the invention recited in the counts. The board found that the terminal portion of the counts was [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_0240%3A1. Public record. Not legal advice.