ROTH GREETING CARDS, Appellant, v. UNITED CARD COMPANY, an
Illinois corporation, Appellee
No. 23067
UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT
429 F.2d 1106; 1970 U.S. App. LEXIS 8234; 166 U.S.P.Q.
(BNA) 291
July 10, 1970
HAMLEY, Circuit Judge:
Roth Greeting Cards (Roth) and United Card Company (United), both
corporations, are engaged in the greeting card business. Roth brought this suit
against United to recover damages and obtain injunctive relief for copyright
infringement of seven studio greeting cards. n1 After a trial to the court
without a jury, judgment was entered for defendant. Plaintiff appeals.
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n1 While Roth also sought relief on the ground of unfair competition, no
evidence was introduced on that phase of the case, and the matter of unfair
competition does not concern us on this appeal.
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Roth's claim involves the production and distribution by United of seven
greeting cards which bear a remarkable resemblance to seven of Roth's cards on
which copyrights had been granted. Roth employed a writer to develop the
textual material for its cards. When Roth's president determined that a textual
[*1108] [**2] idea was acceptable, he would integrate that text into a rough
layout of a greeting card with his suggested design for the art work. He would
then call in the company artist who would make a comprehensive layout of the
card. If the card was approved, the artist would do a finished layout and the
card would go into production.
During the period just prior to the alleged infringements, United did not
have any writers on its payroll. Most of its greeting cards came into fruition
primarily through the activities of United's president, Mr. Koenig, and its
vice-president, Edward Letwenko.
The source of the art and text of the cards of United, here in question, is
unclear. Letwenko was unable to recall the origin of the ideas for most of
United's cards. He speculated that the gags used may have come from plant
personnel, persons in bars, friends at a party, Koenig, or someone else. He
contended that the art work was his own. But he also stated that he visited
greeting card stores and gift shows in order to observe what was going on in the
greeting card business. Letwenko admitted that he may have seen the Roth cards
during these visits or that the Roth cards may have been in his office [**3]
prior to the time that he did his art work on the United cards.
On these facts, the trial court held for defendant on alternative grounds,
lack of jurisdiction and lack of infringement of any copyrightable material.
The trial court based its jurisdictional holding on 17 U.S.C. § 13. This
statute provides that no action for infringement of copyright "shall be
maintained" until the provisions of Title 17 of the United States Code with
respect to the deposit of copies and registration of such work "shall have been
complied with."
The provisions of that title with respect to the deposit of copies and
registration, insofar as here relevant, are 17 U.S.C. §§ 10, 13 and 209. Under
these provisions one who desires to copyright his work by publication: (1)
publishes the work with an attached notice of copyright, (2) promptly deposits,
in the copyright office or in the mail addressed to the Register of Copyrights,
two completed copies of the work and (3) pays the prescribed fee. If these
steps have been properly performed it is the duty of the Register [**4] of
Copyrights to issue a certificate of registration under the seal of the
copyright office.
Roth followed the described three-step procedure in seeking copyright
protection for its greeting cards on June 6, 1966. The copyright office
returned the applications for a change of category of registration. The revised
applications were placed in the mail to the copyright office on July 27, 1966,
and received there on July 29, 1966. Roth filed this action on July 27, 1966,
which was the same day it mailed the revised applications, but two days before
they were received by the copyright office.
In holding that Roth failed to comply with 17 U.S.C. § 13, the district court
in effect held that an action is "maintained" within the meaning of that statute
when it is instituted. The court apparently reasoned therefrom that: (1) under
section 13, a district court does not acquire subject-matter jurisdiction of a
copyright infringement suit upon the filing of the complaint, if relevant
revised copyright applications, required by the copyright office, are not then
on file with that office; and (2) jurisdiction is not subsequently conferred
upon receipt of the revised [**5] applications by the copyright office prior to
judgment, at least in the absence of an amended complaint filed after such
event.
The cases appear to be divided on the question of whether "maintained," as
used in 17 U.S.C. § 13 means "begun" or "continued." But we need not resolve
that question, for there are three other reasons why, in our opinion, the
district court had subject-matter jurisdiction. First, when plaintiff placed
the revised applications in the mail on July 27, 1966, it had done everything
required of it [*1109] under the copyright law with respect to the deposit of
copies and registration and could therefore, on that day "maintain" that action,
giving the term "maintain" the strict construction the district court adopted;
second, the revised copyright applications, made necessary by the incorrect
original classification, relate back to the date of filing of the original
applications, which was before the complaint was filed; n2 and third, the
pretrial conference order filed on December 4, 1967, constituted in effect an
amended pleading [**6] which, being subsequent to the filing of the revised
applications, sufficiently satisfied the most technical application of 17 U.S.C.
§ 13. That pretrial order does not mention the section 13 problem, for defendant
did not then advance such a contention. But it specifically recites "* * * this
order shall supplement the pleadings and govern the course of the trial of this
cause. * * *"
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n2 Title 17, U.S.C. § 5, establishing classification of works for
registration, concludes with these words: "* * * nor shall any error in
classification invalidate or impair the copyright protection secured under this
title." In Bouve v. Twentieth Century-Fox Film Corp., 74 App.D.C. 271, 122 F.2d
51 (1941), the court, relying on this language, held that any power the Register
of Copyrights has to classify deposited material gives him no power to refuse
registration of a claim of copyright, which has been already secured by
publication and notice. See also. Peter Pan Fabrics, Inc. v. Dan River Mills,
Inc., 295 F. Supp. 1366, 1368 (S.D.N.Y.1969).
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Accordingly we conclude that the district court judgment is not sustainable
on jurisdictional grounds.
Turning to the merits, the trial court found that the art work in plaintiff's
greeting cards was copyrightable, but not infringed by defendant. The trial
court also found that, although copied by defendant, the wording or textual
matter of each of the plaintiff's cards in question consist of common and
ordinary English words and phrases which are not original with Roth and were in
the public domain prior to first use by plaintiff.
Arguing that the trial court erred in ruling against it on merits, Roth
agrees that the textual material involved in their greeting cards may have been
in the public domain, but argues that this alone did not end the inquiry into
the copyrightability of the entire card. Roth argues that "It is the arrangement
of the words, their combination and plan, together with the appropriate art
work. * * *" which is original, the creation of Roth, and entitled to copyright
protection.
In order to be copyrightable, the work must be the original work of the
copyright [**8] claimant or of his predecessor in interest. M. NIMMER,
COPYRIGHT (hereafter NIMMER), § 10 at 32 (1970). But the originality necessary
to support a copyright merely calls for independent creation, not novelty.
Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir.
1951). Cf. Baker v. Selden, 101 U.S. 99, 102-103, 25 L. Ed. 841 (1879).
United argues, and we agree, that there was substantial evidence to support
the district court's finding that the textual matter of each card, considered
apart from its arrangement on the cards and its association with artistic
representations, was not original to Roth and therefore not copyrightable. n3
However, proper analysis of the problem requires that all elements of each card,
including text, arrangement of text, art work, and association between art work
and text, be considered as a whole.
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n3 Thus, if United had copied only the textual materials, which were not
independently copyrightable, United might have been able to do so with impunity.
Jackson v. Quickslip Co., 110 F.2d 731 (2d Cir. 1940).
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Considering all of these elements together, the Roth cards are, in our
opinion, both original and copyrightable. In reaching this conclusion we
recognize that copyright protection is not available for ideas, but only for the
tangible expression of ideas. Mazer v. Stein, 347 U.S. 201, 217, 74 S. Ct. 460,
98 [*1110] L. Ed. 630 (1954). We conclude that each of Roth's cards,
considered as a whole, represents a tangible expression of an idea and that such
expression was, in totality, created by Roth. See Dorsey v. Old Surety Life
Ins. Co., 98 F.2d 872, 873 (10th Cir. 1938).
This brings us to the question of infringement. Greeting cards are protected
under 17 U.S.C. § 5(a) or (k) as a book, Jackson v. Quickslip Co., Inc., 110
F.2d 731 (2d Cir. 1940), or as a print, 37 C.F.R. § 202.14. They are the
embodiment of humor, praise, regret or some other message in a pictorial and
literary arrangement. As proper subjects of copyright, [**10] they are
susceptible to infringement in violation of the Act. Detective Comics, Inc. v.
Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940).
To constitute an infringement under the Act there must be substantial
similarity between the infringing work and the work copyrighted; and that
similarity must have been caused by the defendant's having copied the copyright
holder's creation. The protection is thus against copying -- not against any
possible infringement caused when an independently created work coincidentally
duplicates copyrighted material. Sheldon v. Metro-Goldwyn Pictures Corp., 81
F.2d 49, 54 (2d Cir. 1936).
It appears to us that in total concept and feel the cards of United are the
same as the copyrighted cards of Roth. With the possible exception of one
United card (exhibit 6), the characters depicted in the art work, the mood they
portrayed, the combination of art work conveying a particular mood with a
particular message, and the arrangement of the words on the greeting card are
substantially the same as in Roth's cards. In several instances [**11] the
lettering is also very similar.
It is true, as the trial court found, that each of United's cards employed
art work somewhat different from that used in the corresponding Roth cards.
However, "The test of infringement is whether the work is recognizable by an
ordinary observer as having been taken from the copyrighted source." White-Smith
Music Pub. Co. v. Apollo Company, 209 U.S. 1, 17, 28 S. Ct. 319, 323, 52 L. Ed.
655 (1907), Bradbury v. Columbia Broadcasting System, Inc., 287 F.2d 478, 485
(9th Cir. 1961).
The remarkable similarity between the Roth and United cards in issue (with
the possible exception of exhibits 5 and 6) is apparent to even a casual
observer. For example, one Roth card (exhibit 9) has, on its front, a colored
drawing of a cute moppet suppressing a smile and, on the inside, the words "i
wuv you." With the exception of minor variations in color and style, defendant's
card (exhibit 10) is identical. Likewise, Roth's card entitled "I miss you
already," depicts a forlorn boy sitting on a curb weeping, with an inside
message reading "* [**12] * * and You Haven't even Left * * *" (exhibit 7), is
closely paralleled by United's card with the same caption, showing a forlorn and
weeping man, and with the identical inside message (exhibit 8).
The question remains whether United did in fact copy the Roth cards. Since
direct evidence of copying is rarely available, copying may be established by
proof of access and substantial similarity. NIMMER § 141.2 at 613. Although in
some circumstances the mere proof of access and substantial similarity will not
demand that the trier automatically find copying, the absence of any
countervailing evidence of creation independent of the copyrighted source may
well render clearly erroneous a finding that there was not copying.
In the present case there was clear and uncontradicted testimony establishing
United's access to the Roth cards. United brought Roth cards to its offices. It
sent its employees out to gift shows and retail stores where the Roth cards were
on display to observe "what the competition was doing." In addition, there was
testimony almost compelling the inference that it was United's [**13] practice
to look at the cards produced by2 [*1111] other companies and make similar
cards for sale under the United label. These circumstances, together with the
marked similarity between the cards on which this suit was brought, with the
possible exception of one card, convince us that each of United's cards in
question, considered as combined compositions of art and text, were in fact
copied from the Roth cards. It follows that there was infringement. See
Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940).
The judgment is therefore reversed and the cause is remanded for further
proceedings consistent with this opinion.
DISSENTBY:
KILKENNY
DISSENT:
KILKENNY, Circuit Judge (dissenting).
The majority agrees with a specific finding of the lower court that the words
on the cards are not the subject of copyright. By strong implication, it
likewise accepts the finding of the trial court that the art work on the cards,
although subject to copyright, was not infringed. Thus far, I agree.
I cannot, however, follow the logic of the majority in holding that the
uncopyrightable words and the imitated, but not copied art work, constitutes
[**14] such total composition as to be subject to protection under the
copyright laws. The majority concludes that in the overall arrangement of the
text, the art work and the association of the art work to the text, the cards
were copyrightable and the copyright infringed. This conclusion, as I view it,
results in the whole becoming substantially greater than the sum total of its
parts. With this conclusion, of course, I cannot agree.
The majority relies principally on Detective Comics, Inc. v. Bruns
Publications, Inc., 111 F.2d 432 (2d Cir. 1940). This case, as I read it, does
not even intimate that the whole can exceed the sum total of its parts. It
involved an intimation of the "Superman" image by a rival company. In finding
infringement, the "Superman" court emphasized that "So far as the pictorial
representations and verbal descriptions of 'Superman' are not a mere delineation
of a benevolent Hercules, but embody an arrangement of incidents and literary
expressions original with the author, they are proper subjects of copyright and
susceptible of infringement because of the monopoly afforded by the Act." p. 433
(Emphasis added.) Moreover, the "Superman" case [**15] involved the creation of
a character, a written dialogue and description which were clearly protected by
copyright law in much the same way that a dialogue and description found in a
novel is protected. The district court n1 in the "Superman" case found that
both the art work and the text materials were copyrightable and that each was
infringed. In the case before us, the findings of the trial judge are in direct
opposition to appellant's contentions. The language of the district court in
"Superman" is worthy of note: "Short of 'Chinese copies' of the plaintiff's
'Superman' strip, the defendant could hardly have gone further than it has done.
" P. 400. The challenged cards before us, I submit, in no way resemble "Chinese
copies" of appellant's material. Other cases cited by the majority are no more
in point than Detective Comics.
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n1 Detective Comics, Inc. v. Bruns Publications, Inc., 28 F. Supp. 399, 400
(D.N.Y. 1939).
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Aside from the above, I call attention to the fact that a number of [**16]
experts appeared in the lower court and testified that the phrases on the cards
were in common use and that Roth's writer often obtained his ideas from others.
In these circumstances, we should not set aside the findings of the lower court.
Williams v. Kaag Manufacturers, Inc., 338 F.2d 949 (9th Cir. 1964). Beyond that,
ordinary phraseology within the public domain is not copyrightable. Dorsey v.
Old Surety Life Insurance Co., 98 F.2d 872 (10th Cir. 1938); American Code Co.
v. Bensinger, 282 F. 829 (2d Cir. 1922).
Feeling, as I do, that the copyright act is a grant of limited monopoly to
the authors of creative literature and art, I [*1112] do not think that we
should extend a 56-year monopoly in a situation where neither infringement of
text, nor infringement of art work can be found. On these facts, we should
adhere to our historic philosophy requiring freedom of competition. I would
affirm.