ALFRED BELL & CO. Ltd. v. CATALDA FINE ARTS, Inc. et al.
No. 271, Docket 21599
UNITED STATES COURT OF APPEALS, SECOND CIRCUIT
191 F.2d 99; 1951 U.S. App. LEXIS 4179; 90 U.S.P.Q. (BNA)
153; 1951 Trade Cas. (CCH) P62,893
June 7, 1951, Argued
July 20, 1951, Decided
The facts are reported in the opinions of the district judge. See 74 F.Supp.
973, and 86 F.Supp. 399.
1. Congressional power to authorize both patents and copyrights is contained
in Article 1, Sec. 8 of the Constitution. n1 In passing on the validity of
patents, the Supreme Court recurrently insists that this constitutional
provision governs. On this basis, pointing to the Supreme Court's consequent
requirement that, to be valid, a patent must disclose a high degree of
uniqueness, ingenuity and inventiveness, [**2] the defendants assert that the
same requirement constitutionally governs copyrights. As several sections of
the Copyright Act- e.g., those authorizing copyrights of 'reproductions of works
of art,' maps, and compilations- plainly dispense with any such high standard,
defendants are, in effect, attacking the constitutionality of those sections.
But the very language of the Constitution differentiates (a) 'authors' and their
'writings' from (b) 'inventors' and their 'discoveries.' Those who penned the
Constitution, n2 of course, knew the difference. The pre-revolutionary English
statutes had made the distinction. n3 In 1783, the Continental Congress had
passed a resolution recommending that the several states enact legislation
[*101] to 'secure' to authors the 'copyright' of their books. n4 Twelve of the
thirteen states (in 1783-1786) enacted such statutes. n5 Those of Connecticut
and North Carolina covered books, pamphlets, maps, and charts. n6
Moreover, in 1790, in the year after the adoption of the Constitution, the
first Congress enacted two statutes, separately dealing [**3] with patents and
copyrights. The patent statute, enacted April 10, 1790, 1 Stat. 109, provided
that patents should issue only if the Secretary of State, Secretary of War and
the Attorney General, or any two of them 'shall deem the invention or discovery
sufficiently useful and important'; the applicant for a patent was obliged to
file a specification 'so particular' as 'to distinguish the invention or
discovery from other things before known and used * * * '; the patent was to
constitute prima facie evidence that the patentee was 'the first and true
inventor or * * * discoverer * * * of the thing so specified.' n7 The Copyright
Act, enacted May 31, 1790, 1 Stat. 124, covered 'maps, charts, and books'. A
printed copy of the title of any map, chart or book was to be recorded in the
Clerk's office of the District Court, and a copy of the map, chart or book was
to be delivered to the Secretary of State within six months after publication.
Twelve years later, Congress in 1802, 2 Stat. 171, added, to matters that might
be copyrighted, engravings, etchings and prints.
Thus legislators peculiarly familiar with the purpose of the Constitutional
grant by statute, imposed far [**4] less exacting standards in the case of
copyrights. They authorized the copyrighting of a mere map which, patently,
calls for no considerable uniqueness. They exacted far more from an inventor.
And, while they demanded that an official should be satisfied as to the
character of an invention before a patent issued, they made no such demand in
respect of a copyright. In 1884, in Burrow-Giles Lithographic Co. v. Sarony,
111 U.S. 53, 57, 4 S.Ct. 279, 28 L.Ed. 349, the Supreme Court, adverting to
these facts said: 'The construction placed upon the constitution by the first
act of 1790 and the act of 1802, by the men who were contemporary with its
formation, many of whom were members of the convention which framed it, is of
itself entitled to very great weight, and when it is remembered that the rights
thus established have not been disputed during a period of nearly a century, it
is almost conclusive.' Accordingly, the Constitution, as so interpreted, [*102]
recognizes that the standards for patents and copyrights are basically
different.
The defendants' contention [**5] apparently results from the ambiguity of
the word 'original'. It may mean startling, novel or unusual, a marked
departure from the past. Obviously this is not what is meant when one speaks of
'the original package,' or the 'original bill,' or (in connection with the 'best
evidence' rule) an 'original' document; none of those things is highly unusual
in creativeness. 'Original' in reference to a copyrighted work means that the
particular work 'owes its origin' to the 'author.' n8 No large measure of
novelty is necessary. Said the Supreme Court in Baker v. Selden, 101 U.S. 99,
102-103, 25 L.Ed. 841: 'The copyright of the book, if not pirated from other
works, would be valid without regard to the novelty, or want of novelty, of its
subject-matter. The novelty of the art or thing described or explained has
nothing to do with the validity of the copyright. To give to the author of the
book an exclusive property in the art described therein, when no examination of
its novelty has ever been officially made, would be a surprise and a fraud upon
the public. That is [**6] the province of letters-patent, not of copyright.
The claim to an invention or discovery of an art or manufacture must be
subjected to the examination of the Patent Office before an exclusive right
therein can be obtained; and it can only be secured by a patent from the
government. The difference between the two things, letters-patent and
copyright, may be illustrated by reference to the subjects just enumerated.
Take the case of medicines. Certain mixtures are found to be of great value in
the healing art. If the discoverer writes and publishes a book on the subject
(as regular physicians generally do), he gains no exclusive right to the
manufacture and sale of the medicine; he gives that to the public. If he
desires to acquire such exclusive right, he must obtain a patent for the mixture
as a new art, manufacture, or composition of matter. He may copyright his book,
if he pleases; but that only secures to him the exclusive right of printing and
publishing his book. So of all other inventions or discoveries.'
In Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250 252, 23 S.Ct.
298, 47 L.Ed. 460, the Supreme Court cited with approval Henderson v. Tompkins,
C.C., 60 F. 758, [**7] where it was said, 60 F.at page 764: 'There is a very
broad distinction between what is implied in the word 'author,' found in the
constitution, 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. Indeed, the statutes themselves make broad
distinctions on this point. So much as relates to copyrights * * * is
expressed, so far as this particular is concerned, by the mere words, 'author,
inventor, designer or proprietor,' with such aid as may be derived from the
words 'written, composed or made,' * * * . But a multitude of books rest safely
under copyright, which show only ordinary skill and diligence in their
preparation. Compiliations are noticeable examples of this fact. With
reference to this subject, the courts have not undertaken to assume the
functions of critics, or to measure carefully the degree of originality, or
literary skill or training involved.' n9
It is clear, then, that nothing in the Constitution commands that
copyrighted matter be strikingly [**8] unique or novel. Accordingly, we were
not ignoring the Constitution when we stated that a 'copy of something in the
public domain' will support a copyright if it is a 'distinguishable variation';
n10 or when we rejected the contention that 'like a patent, a copyrighted work
must be not only original, but new', adding, 'That is not * * * the law as is
obvious in the case of maps or compendia, where later works will necessarily be
anticipated.' n11 All that is needed [*103] to satisfy both the Constitution
and the statute is that the 'author' contributed something more than a 'merely
trivial' variation, something recognizably 'his own.' n12 Originality in this
context 'means little more than a prohibition of actual copying.' n13 No matter
how poor artistically the 'author's' addition, it is enough if it be his own.
Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 23 S.Ct. 298, 47
L.Ed. 460.
On that account, we have often distinguished between the limited protection
accorded a copyright owner and the extensive protection granted a patent owner.
So [**9] we have held that 'independent reproduction of a copyrighted * * *
work is not infringement', n14 whereas it is vis a vis a patent. Correlative
with the greater immunity of a patentee is the doctrine of anticipation which
does not apply to copyrights: The alleged inventor is chargeable with full
knowledge of all the prior art, although in fact he may be utterly ignorant of
it. The 'author' is entitled to a copyright if he independently 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. A patentee, unlike a copyrightee,
must not merely produce something 'original'; he must also be 'the first
inventor or discoverer.' n15 'Hence it is possible to have a plurality of valid
copyrights directed to closely identical or even identical works. Moreover,
none of them, if independently arrived at without copying, will constitute an
infringement of the copyright of the others.' n16
[*104] The difference between patents and [**10] copyrights is neatly
illustrated in the design patent cases. n17 We have held that such a patent is
invalid unless it involves 'a step beyond the prior art', including what is
termed 'inventive genius.' A.C. Gilbert Co. v. Shemitz, 2 Cir., 45 F.2d 98, 99.
We have noted that, as in all patents, there must be a substantial advance over
the prior art. Neufeld-Furst & Co. v. Jay-Day Frocks, 2 Cir., 112 F.2d 715,
716. We have suggested that relief for designers could be obtained if they were
permitted to copyright their designs, and that, until there is an amendment to
the copyright statute, 'new designs are open to all, unless their production
demands some salient ability.' Nat Lewis Purses v. Carole Bars, 2 Cir., 83 F.2d
475, 476. We have noted that if designers obtained such a statute, it would give
them 'a more limited protection and for that reason easier to obtain. * * * '
White v. Leanore Frocks, Inc., 2 Cir., 120 F.2d 113, 115. n18
2. We consider untenable defendants' suggestion that plaintiff's mezzotints
could not validly be copyrighted because they are reproductions of works in the
public domain. [**11] Not only does the Act include 'Reproductions of a work
or art', n19 but- while prohibiting a copyright of 'the original text of any
work * * * in the public domain' n20 - it explicitly provides for the
copyrighting of 'translations, or other versions of works in the public domain'.
n21 The mezzotints were such 'versions.' They 'originated' with those who make
them, and- on the trial judge's findings well supported by the evidence- amply
met the standards imposed by the Constitution and the statute. n22 There is
evidence that [*105] they were not intended to, and did not, imitate the
paintings they reproduced. But even if their substantial departures from the
paintings were inadvertent, the copyrights would be valid. n23 A copyist's bad
eyesight or defective musculature, or a shock caused by a clap of thunder, may
yield sufficiently distinguishable variations. n24 Having hit upon such a
variation unintentionally, the 'author' may adopt it as his and copyright it.
n25
Accordingly, defendants' arguments about the public domain become
irrelevant. They could be relevant only in their bearing on the issue of
infringement, [**12] i.e., whether the defendants copied the mezzotints. n26
But on the findings, again well grounded in the evidence, we see no possible
doubt that defendants, who did deliberately copy the mezzotints, are infringers.
For a copyright confers the exclusive right to copy the copyrighted work- a
right not to have others copy it. Nor were the copyrights lost because of the
reproduction of the mezzotints in catalogues. n27
3. We think the defendants did not establish the anti-trust 'unclean-hands'
defense: (1) The Guild's price-fixing provision was explicitly confined to Great
Britain and Ireland, and did not affect sales in the United States. (2) As to
the Guild agreement to restrict output, n28 there are some considerations: Of
some 600 or 700 members, according to the testimony only 'one or two' are in
this country, for all that the slender proof shows, their participation in Guild
activities may have been limited to the receipt of Guild catalogues; the
plaintiff has no office or assets here, and there is no evidence that it acted
here on behalf of the Guild. So far as the evidence [**13] discloses, the
output restriction was not imposed with sales in the United States in mind.
Accordingly, we take it that the restriction was meant [*106] to have, and did
have, at most, only an incidental, peripheral, reference to sales in the United
States of America. n29 All the foregoing is important since recently the Supreme
Court, in similar contexts, has given the 'unclean hands' doctrine a somewhat
narrowed scope. Kiefer-Stewart Co. v. Joseph E. Seagram & Sons, Inc., 340 U.S.
211, 214, n30 71 S.Ct. 259. We have here a conflict of policies: (a) that of
preventing piracy of copyrighted matter and (b) that of enforcing the anti-trust
laws. We must balance the two, taking into account the comparative innocence or
guilt of the parties, the moral character of their respective acts, the extent
of the harm to the public interest, the penalty inflicted on the plaintiff if we
deny it relief. As the defendants' piracy is unmistakably clear, while the
plaintiffs' infraction of the anti-trust laws is doubtful and at most marginal,
we think the enforcement of the first policy should outweigh enforcement of the
second. n31
4. The trial judge did not [**14] 'abuse' his discretion as to the
allowance or amount of attorneys' fees. We agree with his rulings, and his
reasons therefor, concerning the items of accounting for profits- with but one
exception: We think he erred in allowing defendants to deduct their income
taxes. He said, 'The nature of defendants' acts is, of course darkened somewhat
by the use of a false copyright label, by sales after notice, and by the
defendant Lithograph's apparent unconcern over the validity of the plaintiff's
copyright, so long as defendants Catalda Company and Catalda were willing to
indemnify Lithograph'; he also said that defendants 'were not innocent of
knowledge of the claimed copyright by the plaintiff of the subjects in suit.'
Nevertheless, he held that 'their villainy is not of the deepest dye in that the
copying was open, and with no attempt at concealment, under a good-faith claim
of a right to copy because of the claimed invalidity of the plaintiff's
copyright.' With that last conclusion we disagree. Open and unabashed piracy is
not a mark of good faith; and we think the 'claimed 1292 *14 [**15]
invalidity' unjustified. n32 In these circumstances, the deduction of the taxes
was improper. n33 To that extent only, the judgment is modified; otherwise it is
affirmed.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n1. 'To promote the Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries'.
n2. Many of them were themselves authors.
n3. The Act of Anne 8, c. 19, was entitled 'An Act for the encouraging of
learning, by vesting of the copies of printed books in the authors or purchasers
of such copies, during the times therein mentioned.'
The previous history shows the source of the word 'copyright.' See 1 Laddas,
The International Protection of Literary and Artistic Property (1938) 15:
'In England, the royal grants of privilege to print certain books were not
copyrights. They were not granted to encourage learning or for the benefit of
authors; they were commercial monopolies, licenses to tradesmen to follow their
calling. As gradually monopolies became unpopular, the printers sought to base
their claims on other grounds, and called the 'right of copy' not a monopoly,
but a property right. The Stationers Company had a register in which its
members entered the titles of the works they were privileged to print. A custom
developed by which members refrained from printing the books which stood on the
register in the name of another. Thus members respected each other's 'copy,' as
it was called, and there grew up a trade recognition of 'the right of copy' or
copyright. This right was subsequently embodied in a by-law of the Stationers
Company. The entry in the register was regarded as a record of the rights of
the individual named, and it was assumed that possession of a manuscript carried
with it the right to print copies.' See also Sheavyn, The Literary Profession in
the Elizabethan Age (1909) 52-53, 64-65, 70-71, 76-80. [**16]
n4. See Bulletin No. 3 (1900) of Library of Congress, Copyright Office.
n5. Ibid. 11-31.
n6. It is of interest that the statutes of Connecticut, South Carolina,
Georgia and New York contained this provision: If on the complaint of a person,
a court found that the author or proprietor had neglected to furnish the public
with sufficient editions of a copyrighted work, or had offered the work for sale
at an unreasonable price, the court should enter an order requiring the
offering, within a reasonable time, of a sufficient number at a reasonable price
determined by the court; if there was non-compliance, the court was authorized
to give the complainant a license to publish the work in such numbers and on
such terms as the court deemed just and reasonable. The North Carolina statute
was somewhat similar in this respect.
n7. See Jefferson's remarks on the strict criteria of invention used by the
Secretarial 'patent board,' in a letter of August 13, 1813, to Isaac McPherson,
reprinted in Padover, The Complete Jefferson (1943) 1011 at 1016.
n8. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57-58, 4 S.Ct.
279, 281, 28 L.Ed. 349. [**17]
n9. Emphasis added.
n10. Gerlach-Barklow Co. v. Morris & Bendien, 2 Cir., 23 F.2d 159, 161.
n11. Sheldon v. Metro-Goldwyn Pictures Corp., 2 Cir., 81 F.2d 49, 53. See
also Ricker v. General Electric Co., 2 Cir., 162 F.2d 141, 142.
n12. Chamberlin v. Uris Sales Corp., 2 Cir., 150 F.2d 512; cf. Gross v.
Seligman, 2 Cir., 212 F. 930.
n13. Hoague-Sprague Corp. v. Frank C. Meyer, Inc., D.C.N.Y., 31 F.2d 583,
586. See also as to photographs Judge Learned Hand in Jewelers Circular
Publishing Co. v. Keystone Pub. Co., D.C.N.Y., 274 F. 932, 934.
The English doctrine is the same. See Copinger, The Law of Copyrights (7th
ed. 1936) 40-44: 'Neither original thought nor original research is essential';
he quotes the English courts to the effect that the statute 'does not require
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,' but
only that 'though it may be neither novel or ingenious, (it) is the claimant's
original work in that it originates from him, and is not copied.' [**18]
n14. Arnstein v. Edward B. Marks Music Corp., 2 Cir., 82 F.2d 275; Ricker v.
General Electric Co., 2 Cir., 162 F.2d 141, 142.
n15. See Admur, Copyright Law and Practice (1936) 70.
n16. Id. See Lawrence v. Dana, 15 Fed.Cas. 26, 60, No. 8,136: 'Persons
making, using, or vending to others to be used, the patented article are guilty
of infringing the letters-patent, even though they may have subsequently
invented the same thing without any knowledge of the existence of the
letters-patent; but the composition of the same book without copying, though not
likely to occur, would not ba an infringement.' See also Fred Fisher, Inc. v.
Dillingham, D.C.N.Y., 298 F. 145, 147.
The English doctrine is the same. See Copinger, The Law of Copyrights (7th
ed. 1936) 2: 'It is not infrequently urged as an objection to granting copyright
protection for a long term that the effect is to create a monopoly, but at
least, it is not a monopoly of knowledge. The grant of a patent does prevent
full use being made of knowledge, but the reader of a book is not by the
copyright laws prevented from making full use of any information he may acquire
from his reading. He is only prohibited from disseminating that information or
knowledge by multiplying copies of the book or of material portions of it: or,
possibly, by reading the book aloud in public. Copyright is, in fact, only a
negative right to prevent the appropriation of the labours of an author by
another. If it could be shown that two precisely similar works were in fact
produced wholly independently of one another, the author of the work that was
published first would have no right to restrain the publication by the other
author of that author's independent and original work. A patentee, on the other
hand, has the right to prevent another from using his invention if it in fact
infringes the former's patent, notwithstanding that the latter's invention was
the subject of independent investigation on his part.' [**19]
n17. 35 U.S.C.A. § 73 requires that for a design patent the design shall be
'not known or used by others in this country before' the 'invention thereof, and
not * * * described in any printed publication in this or any foreign country
before' the 'invention thereof.'
n18. See also Stein v. Export Lamp Co., 7 Cir., 188 F.2d 611, 612-613.
n19. 17 U.S.C. § 5.
n20. 17 U.S.C. § 8 (formerly Sec. 7).
n21. 17 U.S.C. § 7 (formerly Sec. 6).
See Judge Learned Hand in Fred Fisher, Inc. v. Dillingham, D.C., 298 F. 145,
150-151: 'Take, for example, two faithful compiliations or translations. While
it may be rare that they should be identical, obviously even that is possible
over substantial parts. It could not be maintained that the earlier version
destroyed the copyright of the later, and yet, if copyright be analogous to
patents, this must result. Certainly, the labor of the second translator or
compiler is not lost, so he do not use the work of the first.
'Directories constitute a familiar instance of such compilations. No one
doubts that two directories, independently made, are each entitled to copyright,
regardless of their similarity, even though it amount to identity. Each being
the result of original work, the second will be protected, quite regardless of
its lack of novelty. But the best instance is in the case of maps. Here, if each
be faithful, identity is inevitable, because each seeks only to set down the
same facts in precisely the same relations to each other. So far as each is
successful, each will be exactly the same. While I know no case which involves
the point, Bowker says on page 255 (Copyright, Its History and Law):
'Two map makers, collecting at first hand, would naturally make the same map,
and each would equally be entitled to copyright. In this respect copyright law
differs from patent law, where a first use bars others from the same field."
Judge Hand there also said at page 150 of 298 F.: 'Any subsequent person is,
of course, free to use all works in the public domain as sources for his
compositions. No later work, though original, can take that from him. But there
is no reason in justice or law why he should not be compelled to resort to the
earlier works themselves, or why he should be free to use the composition of
another, who himself has not borrowed. If he claims the rights of the public,
let him use them; he picks the brains of the copyright owner as much, whether
his original composition be old or new. The defendant's concern lest the public
should be shut off from the use of works in the public domain is therefore
illusory; no one suggests it. That domain is open to all who tread it; not to
those who invade the closes of others, however similar.' [**20]
n22. See Copinger, The Law of Copyrights (7th ed. 1936) 46: 'Again, an
engraver is almost invariably a copyist, but although his work may infringe
copyright in the original painting if made without the consent of the owner of
the copyright therein, his work may still be original in the sense that he has
employed skill and judgment in its production. He produces the resemblance he
is desirous of obtaining by means very different from those employed by the
painter or draughtsman from whom he copies: means which require great labour and
talent. The engraver produces his effects by the management of light and shade,
or, as the term of his art expresses it, the chiarooscuro. The due degrees of
light and shade are produced by different lines and dots; he who is the engraver
must decide on the choice of the different lines or dots for himself, and on his
choice depends the success of his print.'
n23. See Kallen, Art and Freedom (1942) 977 to the effect that 'the beauty of
the human singing voice, as the western convention of music hears it, depends
upon a physiological dysfunction of the vocal cords. * * * '
Plutarch tells this story: 'A painter, enraged because he could not depict
the foam that filled a horse's mouth from champing at the bit, threw a sponge at
his painting; the sponge splashed against the wall- and achieved the desired
result. [**21]
n24. Cf. Chamberlin v. Uris Sales Corp., 2 Cir., 150 F.2d 512 note 4.
n25. Consider inadvertent errors in a translation. Compare cases holding
that a patentable invention may stem from an accidental discovery. See, e.g.,
Radiator Specialty Co. v. Buhot, 3 Cir., 39 F.2d 373, 376; Nichols v. Minnesota
Mining & Mfg. Co., 4 Cir., 109 F.2d 162, 165; New Wrinkle v. Fritz,
D.C.W.D.N.Y., 45 F.Supp. 108, 117; Byerley v. Sun Co., 8 Cir., 184 F. 455,
456-457.
Many great scientific discoveries have resulted from accidents, e.g., the
galvanic circuit and the x-ray.
n26. Sheldon v. Metro-Goldwyn Pictures Corp., 2 Cir., 81 F.2d 49, 54;
Detective Comics, Inc. v. Bruns Publications, 2 Cir., 111 F.2d 432, 433.
n27. Gerlach-Barklow Co. v. Morris & Bendien, 2 Cir., 23 F.2d 159, 163;
Basevi v. Edward O'Toole Co., D.C., 26 F.Supp. 41, 49.
n28. A copyright-owner, where he does not act in concert with others, may
lawfully restrict his output and charge what prices he pleases, for there is no
statutory provision forbidding such conduct.
That a statute might so forbid, see the legislation (cited in note 6, supra)
of twelve of the states shortly before the addition of the Constitution. [**22]
n29. Cf., United States v. Aluminum Company of America, 2 Cir., 148 F.2d 416,
443.
Defendants do not contend, nor is there any evidence in the record, that the
restriction was invalid in England.
n30. See also Bruce's Juices v. American Can. Co., 330 U.S. 743, 67 S.Ct.
1015, 91 L.Ed. 1219; Automatic Radio Mfg. Co. v. Hazeltine Research, Inc., 339
U.S. 827, 832, 70 S.Ct. 894, 94 L.Ed. 1312.
n31. Cf. Standard Oil Co. v. Clark, 2 Cir., 163 F.2d 917, 926; West 52nd
Theatre Co. v. Tylor, 2 Cir., 178 F.2d 128; Turner Glass Corp. v. Hartford
Empire Co., 7 Cir., 173 F.2d 49, 53; Interstate Hotel Co. v. Remick Music Corp.,
8 Cir., 157 F.2d 744.
n32. The 'clean hands' defense was not in defendants' minds when they
infringed: It was not contained in defendants' original answers to the
complaint.
n33. Sheldon v. Metro-Goldwyn Pictures Corp., 2 Cir., 106 F.2d 45, 53.
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