204 F.2d 472 (4th Cir. 1953), 6572, Stein v. Mazer

Docket Nº:6572.
Citation:204 F.2d 472, 97 U.S.P.Q. 310
Party Name:STEIN et al. v. MAZER et al.
Case Date:May 19, 1953
Court:United States Courts of Appeals, Court of Appeals for the Fourth Circuit
 
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Page 472

204 F.2d 472 (4th Cir. 1953)

97 U.S.P.Q. 310

STEIN et al.

v.

MAZER et al.

No. 6572.

United States Court of Appeals, Fourth Circuit.

May 19, 1953

Argued April 17, 1953.

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George E. Frost, Chicago, Ill. (Joseph T. Brennan, 2d, Baltimore, Md., and Will Freeman, Chicago, Ill., on brief), for appellants.

Max R. Kraus, Chicago, Ill., for appellees.

Warren E. Burger, Asst. Atty. Gen., Paul A. Sweeney and Benjamin Forman, Attorneys, Department of Justice, and George D. Cary, United States Copyright Office, Washington, D. C., on brief for the Register of Copyrights as amicus curiae.

Before PARKER, Chief Judge, and SOPER and DOBIE, Circuit Judges.

DOBIE, Circuit Judge.

Plaintiffs instituted a civil action against defendants in the United States District Court for the District of Maryland, seeking an injunction and damages for the alleged infringement of six copyrights for small three-dimensional statuettes of male and female dancing figures made of semi-vitreous china. Registration of these statuettes was duly granted to the plaintiffs by the Copyright Office. The District Court dismissed the complaint of plaintiffs, who have appealed to us. The decision of the District Court appears to be virtually a holding that a work of art which may be, and is, utilized for some practical purpose, may be protected only by a design patent and not by copyright. No question of unfair competition is here involved, only the validity of the copyrights is in issue. We think the District Court erred in holding the copyrights invalid. The judgment below must, accordingly, be reversed. The Register of Copyrights was permitted to file with us a brief as amicus curiae.

The works of plaintiffs here involved were executed by preparing original sketches, sculpturing the resulting figures in clay on a clay armature, and then preparing a mold from the clay sculpture for casting copies. The specimens submitted to the Copyright Office were in statue form. We think these statues may fairly be classified as 'works of art.'

Plaintiffs are in the business primarily, almost exclusively, of making and selling these statues in lamp form, though a few,

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very few, of the copyrighted statues have been sold as statues. The copyrighted figures have been sold by defendants as parts of complete lamps, of which they form the base portion. Beyond any dispute, defendants have meticulously and in minute detail copied every element of the copyrighted statues of the plaintiffs.

It is highly important, at the outset, to distinguish between a design patent and a copyright. Although similar in some respects, the two disclose significant differences. Of particular importance here are the requirements for their issuance and registration and the extent of the protection they afford. A design patent may be obtained only for a 'new, original and ornamental design for an article of manufacture'. 35 U.S.C.A.§ 171. To be valid, therefore, a patent 'must disclose a high degree of uniqueness, ingenuity and inventiveness'. Alfred Bell & Co. Ltd. v. Catalda Fine Arts, Inc., 2 Cir., 191 F.2d 99, 100. A copyright, on the other hand, may be registered if the particular work is 'original, ' i. e., if it owes its origin to the 'author.' Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57-58, 4 S.Ct. 279, 28 L.Ed. 349. It is 'valid without regard to the novelty or want of novelty of its subject matter.' Baker v. Selden, 101 U.S. 99, 102, 25 L.Ed. 841.

Because the standards for obtaining copyright protection are of a lower order than those required for design patents, the protection granted under a copyright is more limited. Since a copyright is intended to protect authorship, the essence of copyright protection is the protection of originality rather than novelty or invention. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249-250, 23 S.Ct. 298, 47 L.Ed. 460; Baker v. Selden, 101 U.S. 99, 102-104, 25 L.Ed. 841. Said Circuit Judge Frank in Alfred Bell & Co. Ltd. v. Catalda Fine Arts, Inc., 2 Cir., 191 F.2d 99, 103:

'* * * 'independent reproduction of a copyrighted * * * work is not infringement', 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.' '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.''

More tersely put, 'a copyright on a work of art does not protect a subject, but only the treatment of a subject.' F. W. Woolworth Co. v. Contemporary Arts, 1 Cir., 193 F.2d 162, 164, affirmed 344 U.S. 228, 73 S.Ct. 222. See, also, Copinger, 'The Law of Copyrights' (7th Ed.1936); Admur, 'Copyright Law and Practice' (1936); Ricker v. General Electric Co., 2 Cir., 162 F.2d 141, 142; Arnstein v. Edward B. Marks Music Corporation, 2 Cir., 82 F.2d 275; Sheldon v. Metro-Goldwyn Pictures Corporation, 2 Cir., 81 F.2d 49, 54; Gerlach-Barklow Co. v. Morris & Bendien, 2 Cir., 23 F.2d 159, 161.

The life of a copyright is much longer than that of a design patent. For our purposes, the subject matter of a copyright includes, 17 U.S.C.A. § 5(g) and (h): 'works of art; models or designs for works of art; reproductions of a work of art.' The design patent primarily extends to 'any new, original and ornamental design for an article of manufacture'. 35 U.S.C.A. § 171.

Plaintiffs do not contend that defendants may not lawfully produce and sell an electric lamp whose base is a sculptured, human, dancing figure. Nor do plaintiffs contend that defendants may not lawfully produce and sell an electric lamp whose base is an authorized copy of the sculptured, human,

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dancing figures copyrighted by plaintiffs. Plaintiffs argue only that the production and sale of an electric lamp whose base is an unauthorized copy of the copyrighted statue of plaintiffs is an infringement of the copyright. Thus, the issue is not whether a design of an electric lamp may be protected as a monopoly by means of a copyrighted registration. Rather, the issue is whether a copyrighted statue may be copied irrespective of its use as a statue or as a component part of an electric lamp, or any other article of manufacture.

We append pertinent portions of the Design Patent Statutes and the Copyright Statute:

The Design Patent Statutes

1842-5 Stat. 543.

Section 3. '* * * That any citizen * * * who by his * * * own industry * * * produced any new and original design for a manufacture, whether of metal or other material or materials, or any new and original design for the printing of woollen, silk, cotton, or other fabrics, or any new and original design for a bust, statue, or bas relief or composition in alto or basso relievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed or painted or cast or otherwise fixed on, any article of manufacture, or any new and original shape or configuration of any article of manufacture * * * may [obtain] a patent therefor'.

1861-12 Stat. 246.

Section 3 of the 1842 Patent Act re-enacted.

1870-16 Stat. 198.

Section 71. '* * * That any person who, by his own industry, genius, efforts, and expense, has invented or produced any new and original design for a manufacture, bust, statue, alto-relievo, or bas-relief; any new and original design for the printing of wool(l)en, silk, cotton, or other fabrics; any new and original impression, ornament, pattern, print, or picture, to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture; or any new, useful, and original shape or configuration of any article of manufacture, * * * may, * * * obtain a patent therefor.'

1874--Section 4929, Revised Statutes.

Section 71 of the 1870 Act re-enacted.

1902-32 Stat. 193.

'Any person who has invented any new, original, and ornamental design for an article of manufacture, * * * may, * * * obtain a patent therefor.'

1952-35 U.S.C.A. § 171, 66 Stat. 792.

'Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, * * *.'

The Copyright Statutes

1870-16 Stat. 198, 212.

Section 86. '* * * any citizen of the United States * * * who shall be the author, inventor, designer, or proprietor of any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statute, statuary, and of models or designs intended to be perfected as works of the fine arts, * * * shall upon complying with the provisions of this act, have the sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing, and vending the same; * * *.'

1874--Section 4952, Revised Statutes.

Section 86 of the 1870 Act re-enacted.

1909-35 Stat. 1076.

Section 5. '* * * the application for registration shall specify to which of the following classes the work in which copyright is claimed belongs: * * *

'(g) Works of art; models or designs for works of art;

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'(h) Reproductions of a work of art; * * *.'

1947-17 U.S.C.A. § 5, 61 Stat....

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