Day-Brite Lighting, Inc. v. Sta-Brite Fluorescent Mfg. Co., 19172.

Citation308 F.2d 377
Decision Date26 October 1962
Docket NumberNo. 19172.,19172.
PartiesDAY-BRITE LIGHTING, INC., Appellant, v. STA-BRITE FLUORESCENT MANUFACTURING COMPANY, Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals (5th Circuit)

Owen J. Ooms, Chicago, Ill., Roy A. Lieder, Frederick M. Woodruff, St. Louis, Mo., Louis S. Bonsteel, Miami, Fla., Ooms, Welsh & Bradway, Chicago, Ill., Gravely, Lieder & Woodruff, St. Louis, Mo. (Smathers, Thompson & Dyer, Miami, Fla., of counsel), for appellant.

Robert H. Givens, Jr., Miami, Fla., for appellee.

Before RIVES, JONES and GEWIN, Circuit Judges.

RIVES, Circuit Judge.

The appellant-plaintiff sued the appellee-defendant1 for infringement of plaintiff's trademark Day-Brite, and also for unfair competition and for infringement of other trademarks, copyrights and a design patent. The counts based on the design patent were dismissed by the district court and we are not asked to review that ruling.2 The district court entered judgment for the defendant based upon brief findings of fact as follows:

"Findings of Fact.
"The heart of the original action was destroyed when this Court allowed a motion to strike the patent counts. This opinion deals with the balance of the complaint.
"The plaintiff was incorporated in 1923, and since then has been using the trademark `Day-Brite\' on electrical fixtures and in periodicals advertising the same. It has registered trademarks in addition for such names as `Cleartex,\' `Para-Louver,\' and `Lumatex,\' and various copyrighted periodicals and pages therein.
"The defendant was incorporated in 1946 under the name Sta-Brite Fluorescent Manufacturing Company, and within a few years thereafter the plaintiff was aware that the defendant was using the name `Sta-Brite,\' except for an investigation to the effect of the use of this name on its name of `Day-Brite\' took no action against the defendant until 1958.
"The alleged infringements of copyrighted material and trade marks are highly technical and isolated, and probably would never have been the basis of Court action except as they were joined with a patent suit which has been disposed of by this Court, rightly or wrongly.
"This is likewise true of the claims of unfair competition based on the alleged trademark and copyright infringements.
"I find on all of the evidence that the claims now in suit are groundless. A careful examination of the evidence, which was chiefly composed of exhibits, discloses this."

We are unable to agree with the district court that the heart of this action resided in the patent counts. Instead, we think that each claim must be considered on its own merits.

Count 1 alleges infringement of copyright Registration No. 73,651, Class K of plaintiff's catalogue sheet 6 of Section 50. A comparison of that catalogue sheet with pages 43 and 44 of defendant's catalogue shows that there was substantial copying of both sides of the sheet. On the front side of both sheets are the following four headings in the same order: "APPLICATION," "INSTALLATION," "FINISH," "WIRING." A considerable amount of the wording under each of the headings is verbatim the same. The reverse side of each sheet contains a diagram extending across the width of the page, both very similar, and underneath that six illustrations again in the same order and captioned the same, viz: "FITTING MIRRORS," "WASH ROOMS," "CHALKBOARDS," "COUPON BOOTHS," "BANK CAGES," and "WALL DISPLAYS." The wall clock on both illustrations of "CHALKBOARDS" shows the same time. Both "WALL DISPLAYS" illustrations contain the slogan, "BUY U. S. BONDS."

The defendant can hardly in good faith deny that it copied plaintiff's catalogue sheet. Instead, the defendant is the party who becomes highly technical. It insists that plaintiff's catalogue sheet 6 of Section 50 is not properly identified as the work copyrighted. The certificate shows the title of the work copyrighted as "Sheet 6 of Section 50 of Day-Brite catalogue." The plaintiff's president identified the sheet as the work copyrighted before it was introduced in evidence. Defendant insists that was not evidence of the work on file in the Copyright Office. It was at least prima facie evidence. The defendant had ample notice of the charge, and if it really claimed that some different sheet had been copyrighted it could have so proved. There was no such proof and no conflict in the evidence on this point.

Next, the defendant urges that plaintiff's copyright is invalid because the registration is under Class K covering "Prints and pictorial illustrations including prints or labels used for articles of merchandise," and that this catalogue sheet was not a print or label "used" for articles or merchandise, but was instead "published" in connection with the sale or advertisement of articles of merchandise. It is enough to say that the same section which prescribes the classification of works for registration specifically provides:

"The above specifications shall not be held to limit the subject matter of copyright as defined in section 4 of this title, nor shall any error in classification invalidate or impair the copyright protection secured under this title." Title 17 U.S.C.A. § 5.

We do not stop to inquire whether the classification was correct, for if not correct it did not invalidate or impair the copyright protection.

Next, the defendant urges that plaintiff's catalogue sheet reflects no originality. It is interesting to note the different emphasis on originality in copyrights and patents extending back to the constitutional power of Congress. "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Constitution, Art. I, Sec. 8, Clause 8. Originality can be implied in "writings," but more clearly so in "discoveries." Most copyrights of advertisements would be invalidated if anything more than a very low degree of originality were required. In response to commercial reality, it is now settled that extremely little originality is essential for the copyright of an advertisement. Bleistein v. Donaldson Lithographing Co., 1903, 188 U.S. 239, 250-252, 23 S.Ct. 298, 300, 47 L.Ed. 460; Ansehl v. Puritan Pharmaceutical Co., 8 Cir., 1932, 61 F.2d 131, 136; Gordon v. Weir, E.D.Mich., 1953, 111 F.Supp. 117, 123, aff'd per curiam, 6 Cir., 1954, 216 F.2d 508 (an advertisement of a dot counting contest); Silvers v. Russell, S.D.Calif., 1953, 113 F.Supp. 119, 123. "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, 873, 119 A.L.R. 1250. Clearly, plaintiff's catalogue sheet had sufficient originality to be copyrightable.

Next, defendant urges without citation of authority, that the reverse side of its catalogue sheet does not infringe the reverse side of plaintiff's, because the notice of copyright appears only on the front side. It appears to us that the notice requirements of the Copyright Act, 17 U.S.C.A. § 10 and § 19, do not necessitate as to one familiar with the front side on which the notice of copyright appears that another notice be on the reverse side of the sheet. See Coventry Ware, Inc. v. Reliance Picture Frame Co., 2 Cir., 1961, 288 F.2d 193.

Very clearly the defendant is guilty of infringing plaintiff's copyright on its catalogue sheet 6 of Section 50.

Count 2 of the complaint alleges infringement of copyright Registration No. 116,083 of plaintiff's catalogue "Sheet 40-A, Section 20, Cleartex Troffer." Defendant's catalogue sheet pages 49 and 50 for a DBR Fluorescent Fixture is similar, but our comparison of the two does not convince us that the defendant has copied from plaintiff's catalogue sheet. The initials "DBR" appearing on one of the illustrations and the words "Sandee Cleartex" in the text of defendant's sheet are suspect. However, defendant's evidence went to show that these terms were used inadvertently. Under all of the evidence, we are not convinced that the district court was erroneous in its ruling that the copyright of this catalogue sheet has not been infringed by the defendant.

Counts 3 and 4 are the counts based on the design patent and, as has been stated, no review is sought of the order dismissing those counts.

Counts 5 and 6 charge infringement of plaintiff's trademark "Cleartex" for fluorescent lighting fixtures and parts and unfair competition because of such infringement. The word "Cleartex" was used by defendant on only three of its publications. The first was in reprinting plaintiff's chart of the mathematical coefficients of various shielding elements. This chart was not copyrighted. We cannot see that the reprinting of it constituted an infringement on the trademark "Cleartex," because it does not appear that such reprinting "is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods." 15 U.S.C.A. § 1114(1).

Defendant's second use of "Cleartex" was on the page 49 of its catalogue, which has been discussed in connection with Count 2 of the complaint. There it referred to "Sandee Cleartex Plastic panels." Defendant's president explained that the reference was to a panel purchased from Sandee Manufacturing Company, a competitor of plaintiff, and that he was under the impression that it was identified as a "Cleartex" panel. As soon as he learned his mistake, he recalled this sheet of the catalogue. No fixtures had ever been sold that were identified in this sheet as "Cleartex." On page 12 of the blue price list in the back of defendant's catalogue, there is also a reference to "Cleartex Plastic Panels" and to catalogue page 49. This reference also bears the suspect initials DBR. The question is a close one, but we are not convinced that the district court's finding that the defendant did not infringe the trademark "Cleartex" is erroneous.

We think it...

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