Vacheron & Constantin-Le Coultre W. v. Benrus W. Co.

• Decision Date: 21 October 1958
• Docket Number: Docket 24934.,No. 263,263
• Citation: 260 F.2d 637
• Parties: VACHERON & CONSTANTIN-LE COULTRE WATCHES, Inc., Appellant, v. BENRUS WATCH COMPANY, Inc., Appellee.
• Court: U.S. Court of Appeals — Second Circuit

260 F.2d 637 (1958)

VACHERON & CONSTANTIN-LE COULTRE WATCHES, Inc., Appellant, v. BENRUS WATCH COMPANY, Inc., Appellee.

No. 263, Docket 24934.

United States Court of Appeals Second Circuit.

Argued March 27 and 28, 1958.

Decided October 21, 1958.

Stanton T. Lawrence, Jr., New York City, Pennie, Edmonds, Morton, Barrows & Taylor, W. Brown Morton, and Robert McKay, New York City, of counsel, for appellant.

Harold James, New York City, James & Franklin, New York City, of counsel, for appellee.

Before CLARK, Chief Judge, and HAND and LUMBARD, Circuit Judges.

HAND, Circuit Judge.

This appeal arises upon a complaint in two counts — one for the defendant's infringement of a registered copyright upon a wrist watch, and the other for infringement of Design Patent No. 178,091 upon the same watch. The complaint also contained a count for unfair competition which was dismissed, but from which the plaintiff has not appealed. The defendant moved to dismiss the copyright count because the watch was not copyrightable, and so Judge Dimock decided. Hence he found it unnecessary to hold whether § 13 of the Copyright Act, 17 U.S.C. § 13, forbade an action for infringement because the plaintiff had obtained no certificate of registration. He held the design patent valid and infringed, and summarily granted a permanent injunction against the defendant because it had put in evidence all the earlier watches on which it relied as anticipations, and he thought that he was in as good a position to determine the issue of invention as he would have been after a trial.

It is indeed true that only by an inspection of the design patent and of the actual watches put in evidence can their similarities and differences be compared; and that of course is true, not only as to the watches of the parties to the action, but as to those that the defendant put in evidence as anticipations. We shall not try to improve upon Judge Dimock's verbal description of the plaintiff's design patent and of the defendant's alleged infringing watch. That was as follows (155 F.Supp. 933-934):

"Plaintiff\'s Galaxy is a wrist watch made to sell at $325. Its distinctive feature is the appearance of its face. In place of numerals there are jeweled `sticks\' of equal length and width except the stick of the six o\'clock position which is shortened to permit the introduction of the name `Le Coultre ©.\' The watch has no hands in the usual sense. Instead, transparent and practically invisible rotating discs, concentric with the round face, are substituted and, at a point at the perimeter of each disc, is a round mounting containing a jewel, one mounting being smaller than the other and presumably serving as an hour `hand\' while the larger indicates the minutes. At the axis of the discs appears a polygonal metal head cut with facets like a rose-cut diamond. Inside the ends of the sticks, and concentric with the discs, there is a circle graduated into sixty minutes.

"Defendant\'s Elegance Constellation is made to sell at $295. In general appearance it is very similar to plaintiff\'s Galaxy, the difference being: (1) The sticks at the four quarter positions are the only ones that are jeweled while the others are knurled with much the same effect. (2) Instead of a short stick at six o\'clock, it is at twelve o\'clock and the word, `Benrus\' there appears. (3) Instead of the two round jewel holders on the invisible discs, there appears on one an arrow-shaped metallic indicator scored so that it reflects the light from two planes and on the other a triangular metallic indicator in which a jewel is mounted. (4) The head at the axis is flat and cut with a six pointed star instead of simulating a rose-cut diamond. (5) The circle inside of the ends of the sticks is not graduated into minutes. (6) Instead of the conventional attachments for the wrist band which appear on plaintiff\'s Galaxy, the Elegance Constellation employs lugs, of a shape somewhat similar to the angular points of the jaws on a pair of pliers, which give the watch case the effect of tapering from the greatest diameter of the watch to the point where it meets the wrist band."

We first take up the copyright count. We do not think it necessary to decide whether the plaintiff's watch was copyrightable under § 5(g) of Title 17 U.S.C. which allows the copyrighting of "works of art; models or designs for works of art"; arguendo, we will assume that it was. We think, however, that even so, § 13 of Title 17 forbade any action for infringement of the copyright when the Register of Copyrights had refused, as he did, to accept the watch as copyrightable under § 5(g). It is true that the few decisions on the question leave the answer uncertain. In White-Smith Music Pub. Co. v. Goff, 1911, 187 F. 247, the First Circuit affirmed a judgment dismissing an action for infringement in which the Register had refused to register the publication; but the only question discussed either in the Circuit Court of Appeals, or in the District Court (180 F. 256), was whether the plaintiff was entitled to an extension of the original copyright, which had expired. Judge Putnam did indeed say (187 F. 247) that, "although registration was refused, yet it the plaintiff fully complied with the requirements of law, and is entitled to maintain this suit if it had any statutory right to the extension." So far as appears, the defendant did not raise the objection, and it was not necessary to the decision which was against the plaintiff on the merits. The quotation was at best a dictum, and we do not deem it an authoritative precedent.

The next decision was of this court in 1921 (Lumiere v. Pathé Exchange, Inc., 275 F. 428), affirming a judgment dismissing an action for infringement, though without prejudice, because the copyright owner, the plaintiff, had deposited with the Register only one, instead of two, copies as the statute required. The point was not raised or decided whether, had the plaintiff deposited two copies and the Register refused to issue any certificate under § 209 of Title 17, the action would have succeeded. Thus this decision also did not pass upon the issue here at bar.

Bouvé v. Twentieth Century-Fox Film Corporation, 1941, 74 App.D.C. 271, 122 F.2d 51, was an appeal from a judgment of the District Court, 33 F.Supp. 462, in an action under Federal Rule of Civil Procedure 81(b), 28 U.S.C. to compel the Register to issue the certificate authorized by § 209 of Title 17. The question was whether a collection of "contributions to periodicals" was a single "book" and might be registered as such for a single fee. The Register refused to "register" the "work" except upon payment of a separate fee for each contribution, and both the District Court and the Court of Appeals held that he was subject to what, for brevity, we may still speak of as a "mandamus." In discussing the Register's powers the court said (122 F.2d at page 53) that "in light of recent trends and the divergent philosophies of different schools of thought as to what constitutes art, to say nothing of the large possibilities inherent in plastic works of a scientific or technical character, it seems obvious that, unless the Register has some power to control deposits for copyright, it may soon become necessary to build a new library annex. It seems obvious, also, that the Act establishes a wide range of selection within which discretion must be exercised by the Register in determining what he has no power to accept." It decided that his refusal was "clearly erroneous" and that the judgment of the District Court compelling him to register the "book" was correct. It is the rule in the District of Columbia as well as elsewhere that "mandamus" should not go when another adequate remedy exists. United States ex rel. Frey v. Robertson, 1933, 61 App.D.C. 394, 63 F.2d 457; Calf Leather Tanners' Ass'n v. Morgenthau, 1935, 65 App. D.C. 93, 80 F.2d 536, 542. Therefore, the affirmance of the judgment below necessarily presupposed that no action for infringement would lie in which the question of "registration" could be decided.

In the case at bar it might be argued that the Register's decision whether the plaintiff's wrist watch was a "work of art" within § 5(g) of Title 17 involved such an exercise of discretion that "mandamus" will not go to review it. It is true that "works of art" is a loose phrase whose perimeter is hard to define; nevertheless, the decision here did not demand the exercise of a discretion that was conclusive with the Register. There were no disputed facts; and the mere fact that the meaning of the phrase, "works of art," admits of debate does not make it different from many statutes whose interpretation is every day regarded as reviewable by courts. The situation was wholly unlike that disclosed in Panama Canal Co. v. Grace Line, Inc., 1958, 356 U.S. 309, 78 S.Ct. 752, 2 L.Ed.2d 788, where the court said that "the * * * conflict rages over questions that at heart involve problems of statutory construction and cost accounting" where there were "matters on which experts may disagree" (356 U.S. at page 317, 78 S.Ct. at page 757), and where "the decision to act or not to act is left to the expertise of the agency burdened with the responsibility for decision" (356 U.S. at page 318, 78 S.Ct. at page 758).

We find confirmation of our conclusion in the text of the last sentence of § 13, for it denies the right to sue for infringement "until the provisions of this title with respect to the deposit of copies and registration of such work shall have been complied with," and that imports more than the mere "deposit of copies." Since the owner must submit an application and pay the required fees in order to make a deposit, 17 U.S.C. § 202.3(b) (1952 ed. Supplement V), we can think of no other added condition for "registration" but acceptance by the Register. We therefore affirm the judgment on the first count because the plaintiff did not succeed in "registeri...