Kitchens of Sara Lee, Inc. v. Nifty Foods Corporation

• Decision Date: 07 May 1959
• Docket Number: No. 112,Docket 25072.,112
• Citation: 266 F.2d 541
• Parties: KITCHENS OF SARA LEE, INC., Plaintiff-Appellee, v. NIFTY FOODS CORPORATION, Lady Ilene, Inc., A. Lustig, Inc., Lustig Food Corporation, Abraham Lustig and Ilene Lustig, Defendants-Appellants.
• Court: U.S. Court of Appeals — Second Circuit

266 F.2d 541 (1959)

KITCHENS OF SARA LEE, INC., Plaintiff-Appellee, v. NIFTY FOODS CORPORATION, Lady Ilene, Inc., A. Lustig, Inc., Lustig Food Corporation, Abraham Lustig and Ilene Lustig, Defendants-Appellants.

No. 112, Docket 25072.

United States Court of Appeals Second Circuit.

Argued January 7, 1959.

Decided May 7, 1959.

Beverly W. Pattishall, Chicago, Ill. (W. Thomas Hofstetter, Woodson, Pattishall & Garner, Chicago Ill., Charles Shepard, Rochester, N. Y., on the brief), for plaintiff-appellee.

John Schulman, New York City (Leo F. Simpson, Jr., Rochester, N. Y., Solomon A. Klein, M. William Krasilovsky, New York City, on the brief), for defendants-appellants.

Before CLARK, Chief Judge, MOORE, Circuit Judge, and GIBSON, District Judge.

MOORE, Circuit Judge.

Plaintiff and defendants both bake and sell to the public such familiar bakery products as chocolate cake, cream cheese cake, pound cake and coffee cake. In keeping with popular trend these cakes are sold in a frozen condition. The housewife need do no more to prepare them for service than to remove them from the refrigerator and let them thaw out. Claiming that defendants have violated plaintiff's rights in four distinct fields of law, i. e., (1) copyright infringement; (2) unfair competition; (3) trademark infringement; and (4) unjust enrichment, plaintiff sued. The district court, after trial without a jury, made many findings of fact and concluded, and adjudged as well, that defendants were guilty of copyright infringement, unfair competition and violation of section 368-c, subd. 3 of the New York General Business Law. The court dismissed the claims of trademark infringement and unjust enrichment.

The court found that there had been no proof that defendants' use of their labels resulted in any damage to plaintiff or gains and advantages to defendants from the infringement of plaintiff's copyrights but awarded statutory damages of $12,500, attorney's fees of $10,000 and costs of $1,240.57. In addition the court enjoined defendants from selling bakery products under labels simulating plaintiff's designs and make-up and from using labels, make-up, slogans or designs "which tend to dilute the distinctive quality of plaintiff's copyright labels." Destruction of defendants' labels, plates and molds was also directed. From this judgment defendants appeal.

In this day and age of intensive advertising, both audio and visual, all calculated to din upon the senses of the purchasing public the particular merit of a particular brand so that the prospective purchaser will seek or demand a trade-name product, the problems involved in this case have become of some importance to the commercial world. No longer is Little Jack Horner permitted to reach in and pull out an ordinary plum. At the risk of freezing his finger tips he must search the giant refrigerators of a giant supermarket until he finds a package of "XYZ Tasty-Sweet, Tree Ripened, Sun Kissed, Sugar Plums." On the outside of the package the purchaser will usually find a picture of a plum looking very much like the fruit Nature intended it to be when raised under the tender care of a professional fruit grower. If the same purchaser has need of a broader diet than the plum, he will find temptingly beckoning to him from rows of shelves, every known kind of fruit and vegetable in cans which with a high degree of accuracy depict the contents by colorful labels. There may be over a dozen brands of each commodity and yet, not too surprisingly, beets, ears of corn and even the humble carrot all seem to have quite a similar resemblance to their forebears, the seed packets, whose labels gave similar representations of their future possibilities if they should lead good lives and not be contaminated by a blight.

Having allowed realism to creep into the picture and this being the state of modern merchandising, what can be done to protect plaintiff here against the onslaught of predatory competitors and equally to protect defendants from an unwarranted monopoly and a plaintiff which fain would say "Let them eat cake, but only `Sara Lee,'" and the public which ought at least to have a few varieties to choose from lest its taste buds atrophy?

In 1955 plaintiff's predecessor caused to be registered in the Copyright Office a series of labels for its fresh and frozen bakery products, namely, cream cheese cake, pound cake, chocolate cake and coffee cake. The cakes were packaged in aluminum foil pans of various sizes and shapes, round, rectangular and octagonal, all acquired from a well-known manufacturer of such pans, which were available to the public and as to which plaintiff had no monopoly.

The cakes were covered with cardboard labels. All except the coffee cake were solid cardboard; the coffee cake had a cardboard rim and a large cellophane window in the center.

Plaintiff's and defendants' chocolate, cheese and pound cakes apart from similarity in shape had three markedly distinguishing features. Plaintiff's labels were bright red with its brand name "Sara Lee" in bold white letters. Between "Sara" and "Lee" was a small drawing probably intended to represent a colonial dame. Together with the color and the name the most conspicuous feature of the labels was a picture of a large piece of cake with the superfluous words "chocolate cake," "cream cheese cake," or "all butter pound cake." The piece of cake rested upon a plate on which was a dessert fork. Defendants' labels in contrast were white. Its brand name "Lady Ilene" was displayed in large red letters and between the words and against a yellow background was a rather large drawing of the face of an attractive woman wearing a crown. The center of the label was a medium light blue. The words "chocolate cake," "cream cheese cake," and "all butter pound cake" were also used. The pictures of the products are almost identical. Visual inspection plus the testimony and exhibits more than justify the district court's conclusion that the drawings or pictures of the chocolate cake, cheese cake and pound cake were copied from plaintiff's labels. The coffee cake label had no picture to copy. The balance of the material on all the labels of plaintiff and defendants consisted of fairly standard instructions on how to serve, the ingredients, the weight, the license number of the State of Connecticut and a registration notice of the State of Pennsylvania.

Against this factual background, what are the legal rights of the parties? Under the law of copyrights upon compliance with its requirements any person shall have the exclusive right to print and vend the copyrighted work which may include "Prints and pictorial illustrations including prints or labels used for articles of merchandise" (17 U.S.C.A. §§ 1, 5(k)). The Copyright Office in defining a "Commercial Print or Label" specifically provides for copyright in "prints and labels published in connection with the sale or advertisement of articles of merchandise" (17 U.S.C.A. § 6). Not every commercial label is copyrightable; it must contain "an appreciable amount of original text or pictorial material." "Brand names, trade names, slogans, and other short phrases or expressions cannot be copyrighted, even if they are distinctively arranged or printed." The Copyright Office does not regard as sufficient to warrant copyright registration "familiar symbols or designs, mere variations of typographic ornamentation, lettering or coloring, and mere listings of ingredients or contents." Although the publication of these views (Copyright Office Publication, No. 46, Sept. 1958) does not have the force of statute, it is a fair summary of the law.

Accepting the sufficiently established fact of copying the pictures of the cakes, do these pieces of cake possess "some substantial, not merely trivial, originality" (Chamberlin v. Uris Sales Corporation, 2 Cir., 1945, 150 F.2d 512, 513) so as to be copyrightable? Plaintiff's artists and lithographers have achieved most realistic pictures of cakes which resemble all well-baked cakes of similar type...