Doran v. Sunset House Distributing Corp.

• Decision Date: 20 September 1961
• Docket Number: No. 1342-60.,1342-60.
• Citation: 197 F. Supp. 940
• Court: U.S. District Court — Southern District of California
• Parties: Verna H. DORAN, William E. Doran and Verna H. Doran dba Plasti-Personalities, a sole proprietorship, Plaintiffs, v. SUNSET HOUSE DISTRIBUTING CORP., a corporation, and American Cover Co., Inc., a corporation, Defendants.

197 F. Supp. 940

Verna H. DORAN, William E. Doran and Verna H. Doran dba Plasti-Personalities, a sole proprietorship, Plaintiffs, v. SUNSET HOUSE DISTRIBUTING CORP., a corporation, and American Cover Co., Inc., a corporation, Defendants.

No. 1342-60.

United States District Court S. D. California, Central Division.

September 20, 1961.

COPYRIGHT MATERIAL OMITTED

Richard F. Carr, William E. Moore, Los Angeles, Cal., for plaintiffs.

Vaughan, Brandlin & Baggot and Marvin A. Freeman, Attorneys, Los Angeles, Cal., for defendants.

BYRNE, District Judge.

Plaintiffs filed their complaint in two counts for copyright infringement and unfair competition, invoking the court's jurisdiction under the copyright laws of the United States, Title 17 U.S.C.A. § 1 et seq., and under Title 28 U.S.C.A. §§ 1338(a) and 1338(b).

In the first count, plaintiffs state that they are the authors and proprietors of a work of art, namely a Santa Claus figure, for which they obtained copyright registration on August 28, 1959. It is alleged that since this date the defendants, and each of them, have infringed plaintiffs' copyright by manufacturing, publishing and placing upon the market a Santa Claus figure which defendants copied largely from plaintiffs' copyrighted work of art without plaintiffs' consent.

The second count alleges a cause of action for unfair competition under California law.

When assembled and stuffed with crumpled newspaper, plaintiffs' Santa Claus figure is three-dimensional and approximately five feet six inches in height. This figure is designed to be used as a Christmas decoration and may be placed either inside or outside of the home.

The major component of plaintiffs' Santa Claus is a large bag cut from red plastic material, sewn together, and provided with a slit in the back for the insertion of crumpled newspaper. This bag is cut from an appropriate pattern so that it defines the arms, legs and torso of a human form. White trim is utilized at the end of the arms to give the appearance of mittens, while black plastic at the end of the legs serves as boots. At the top of the torso, a smaller bag is included to represent the head. At the back of this smaller bag there is a flap to receive a stick for supporting the head.

The second component of plaintiffs' Santa Claus consists of a face and hood, which are slipped over the head of the figure.

Finally, a tunic snapped around the waist performs the dual function of providing the illusion of a coat and of holding in the stuffing. A square molded belt buckle, inscribed with scroll work and including a central opening, is attached to the top of the tunic. At the bottom is a horizontal white plastic stripe representing fur trim.

Plaintiffs package their Santa Claus figure for sale in a transparent plastic bag accompanied by an instruction sheet for the construction of a simple wire frame to hold the figure erect in a standing position. Plaintiffs' trademark and trade name, "Plasti-Personalities", appears on this sheet, and is also printed on other descriptive material included in the package.

Plaintiffs have sold their product since 1958. The distributors of plaintiffs' Santa advertised the product extensively in newspapers. Each ad showed Santa in a pose depicting its use as a Christmas decoration.

During the year 1960, defendant American Cover Co., Inc., commenced the manufacture of its Santa Claus figure, which was sold to the retail trade by defendant Sunset House Distributing Corp. This included sales through nationally distributed mail order catalogues and through retail stores. In addition, there were some sales by representatives of American Cover Co.

The Santa Claus figure produced by defendant American Cover is, like plaintiffs' product, made of plastic and life-sized. Defendants concede that their Santa Claus has many mechanical features "not dissimilar" to those of plaintiffs' Santa. It, too, is comprised of a large red plastic bag roughly depicting the human form, with a bag of smaller dimensions at the top, arms with white gloves, and legs with black boots. It, too, has a mask and hood, and a tunic with a black belt at the top and a horizontal white stripe at the bottom. It utilizes an aperture at the back for inserting newspaper stuffing, a sleeve as a receptacle for a slat or yardstick to hold the head erect, and a tunic to hold the stuffing inside.

However, there are certain differences between defendants' Santa Claus and that of plaintiffs. Defendants did not use a molded belt buckle, but instead cut a more simple item from flat sheet plastic having a somewhat different form and appearance from that of plaintiffs' belt buckle. Also, the face for defendants' unit is a fabric mask, while the hood is of cloth instead of plastic.

Defendants sold their Santa Claus figure in a transparent plastic bag similar to plaintiffs' package. The first shipment of Santas received for distribution from American Cover included an instruction sheet bearing the name "Plasti-Personalities". Officials of defendant American Cover have no explanation as to how this name came to appear on their instruction sheet.

In the promotion of defendants' Santa Claus figure, defendant Sunset House distributed a catalogue and published newspaper advertisements. These advertisements depicted Santa perched on a roof gable much the same as the illustrations in the earlier ads for plaintiffs' product. The language in defendants' ads followed a similar format to those of plaintiffs. The price, however, was $6.98 instead of the $7.95 cost of plaintiffs' Santa Claus.

Although the witnesses failed to recall all the events leading up to the production and sale of defendants' Santa Claus figure, representatives of both defendants conceded that they had been inspired by plaintiffs' product. Mr. Tashman of defendant American Cover admitted having obtained one of plaintiffs' Santa Claus figures and testified that it might have been secured from Mr. Carlson of defendant Sunset House. At any rate, Mr. Tashman was asked by Mr. Carlson to produce a Santa Claus figure such as that manufactured by plaintiffs, and such as Mr. Carlson had observed in the advertisements of plaintiffs' product.

The evidence established that in 1960, the first year defendants' product appeared, plaintiffs sold approximately 2,000 fewer of their Santas than in the preceding year.

Plaintiffs' Santa Claus was copyrighted as a work of art, or a model or design for a work of art, as provided in 17 U.S. C.A. § 5(g).¹

Defendants contend that plaintiffs' copyright is invalid for two reasons.

First, they argue that since Santa Claus is in the public domain, a work of art embodying this legendary figure cannot be the subject of a valid copyright.

Unlike the subject matter of a patent, copyrighted material need not be new, but only original. Stein v. Mazer, 4 Cir., 1953, 204 F.2d 472, affirmed 1954, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630; Ricker v. General Electric Co., 2 Cir., 1947, 162 F.2d 141. "Originality" in the realm of copyright refers to the form of the expression, and not to the novelty of the subject matter. Chamberlin v. Uris Sales Corporation, 2 Cir., 1945, 150 F.2d 512; Silvers v. Russell, D.C.S.D.Cal.1953, 113 F.Supp. 119. This is necessarily so because a copyright protects only the expression of the idea, not the idea itself. Mazer v. Stein, 1954, 347 U.S. 201, 74 S. Ct. 460, 98 L.Ed. 630; Kalem Co. v. Harper Bros., 1911, 222 U.S. 55, 32 S.Ct. 20, 56 L.Ed. 92; Holmes v. Hurst, 1899, 174 U.S. 82, 19 S.Ct. 606, 43 L.Ed. 904; Kaeser & Blair, Inc., v. Merchants' Ass'n, 6 Cir., 1933, 64 F.2d 575.

The fact that a copyrighted article depicts a figure, theme or idea in the public domain, does not in itself void the copyright. Rather, the test of copyrightability must be the form which the author has used to express the figure, idea or theme. In the instant case, plaintiffs have reproduced the familiar figure of Santa Claus in a three-dimensional, plastic form. Therefore, the question is whether this medium of expression is sufficiently original to support the granting of the copyright.

To be copyrightable, a work must be "original" in that the author has created it by his own skill, labor and judgment. Dorsey v. Old Surety Life Ins. Co., 10 Cir., 1938, 98 F.2d 872, 119 A.L.R. 1250; Smith v. George E. Muehlebach Brewing Co., D.C.W.D.Mo.1956, 140 F. Supp. 729. As stated in Alfred Bell & Co. v. Catalda Fine Arts, 2 Cir., 1951, 191 F.2d 99, 102.

"* * * `Original' in reference to a copyrighted work means that the particular work `owes its origin' to the `author.' No large measure of novelty is necessary. * * *

"* * * All that is needed to satisfy both the Constitution and the statute is that the `author' contributed something more than a `merely trivial' variation, something recognizably `his own.' Originality in this context `means little more than a prohibition of actual copying.' 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."

Thus, it appears that the requirements for the "originality" necessary to support a copyright are modest. The author must have created the work by his own skill, labor and judgment, contributing something "recognizably his own" to prior treatments of the same subject. However, neither great novelty nor superior artistic quality is required.

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 plaintiffs' Santa has all of the traditional features which go to make up Santa Claus, viz. the red suit and cap with white fur trim, the white hair and beard, the black belt and boots, the ruddy face and the fat form. These features are part and parcel of the "idea" of Santa Claus, and hence are not copyrightable. However, the...