Baldwin Cooke Company v. Keith Clark, Inc., 73 C 1244.

• Decision Date: 12 June 1974
• Docket Number: No. 73 C 1244.,73 C 1244.
• Citation: 383 F. Supp. 650
• Parties: BALDWIN COOKE COMPANY, Plaintiff, v. KEITH CLARK, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

383 F. Supp. 650

BALDWIN COOKE COMPANY, Plaintiff, v. KEITH CLARK, INC., Defendant.

No. 73 C 1244.

United States District Court, N. D. Illinois, E. D.

June 12, 1974.

Theodore W. Anderson, Neuman, Williams, Anderson & Olson, Chicago, Ill., for plaintiff.

John B. Dewey, Lockwood, Dewey, Zickert & Alex, Chicago, Ill., Gordon T. King, Coudert Brothers, New York City, for defendant.

MEMORANDUM OPINION

MARSHALL, District Judge.

This action is brought by Baldwin Cooke Company, an Illinois corporation, against Keith Clark, Inc., incorporated under the laws of Puerto Rico, pursuant to the copyright laws of the United States. 17 U.S.C. § 1 et seq. Baldwin Cooke seeks relief pursuant to 17 U.S.C. § 101.¹ Jurisdiction is founded upon 28 U.S.C. § 1338(a).

The parties have submitted the case for decision on a stipulated record and briefs.

THE PARTIES

Plaintiff, Baldwin Cooke, is engaged in the publishing and marketing of advertising specialties and business gifts. All of its products are marketed by mail order. Among its products is the "Executive Planner."

Defendant, Keith Clark, is engaged in the business of designing, manufacturing and selling commercial desk calendar pads, diaries, planning books and advertising specialty items. Its products are marketed under a number of trademarks, one of which is "Guilford."

Baldwin Cooke contends that Keith Clark infringed the copyright on its "Executive Planner" as a result of the publication by Keith Clark of the "Guilford No. 545-Executive Weekly Minder."

THE EXECUTIVE PLANNER

In 1961 Eaton Paper Corporation, a Delaware corporation, originated and developed a planning book entitled "Executive Planner." It was a 144-page book designed as a combined calendar, appointment, diary and information book with special features for business executives. Eaton published the first edition of the Executive Planner on July 21, 1961 with a notice of copyright thereon. Eaton subsequently published annual editions of the Executive Planner for the years 1963 through 1968 with notices of copyright on each edition. For the most part the 1962 through 1968 editions of the Executive Planner were distributed exclusively by Baldwin Cooke.

In January of 1968, all of the assets of Eaton were acquired by Textron, Inc., a Delaware corporation. A written assignment was executed on March 18, 1968 effecting a transfer from Eaton to Textron of all copyrights from the 1962 through 1968 editions of the Executive Planner. Simultaneously another written assignment was executed by Textron, which transferred Textron's rights in the copyrights for the 1962 through 1968 editions of the Executive Planner to Baldwin Cooke. These assignments were recorded in the copyright office on April 2, 1968. Thereafter the annual editions of the Executive Planner were published and distributed exclusively by Baldwin Cooke, the new copyright proprietor.²

On March 9, 1973 applications for the registration of the copyrights on the 1962 through 1973 editions of the Executive Planner were filed in the copyright office together with the requisite copies of each edition. For the 1962 through 1968 editions, applications were filed by and certificates of registration were issued in the name of Eaton. For the 1969 through 1973 editions, the applications were filed by and the certificates of registration issued in the name of Baldwin Cooke. Subsequently, the copyright assignments which had been previously recorded on April 2, 1968, were again recorded in the copyright office on May 7, 1973, giving Baldwin Cooke ownership of all of the copyrights on the Executive Planner.

Basically, the Executive Planner is a combination calendar, appointment, diary and information book. Eaton began work on the Executive Planner in 1961 when it initiated the development of a format for the first edition. The first edition contained a section setting forth a diary calendar for the current year, the form of which was intended to allow the recording of various data and information; a planning calendar for the subsequent year; a page with three full tabular calendars for the preceding, current and subsequent years; a section for the recording of names, addresses and telephone numbers with a map of the United States showing the applicable telephone area codes; and a section containing various business and recreational information.³ The art work and the layout which consisted of woodcuts placed on the outer corners of the diary pages for the current year along with six small consecutive monthly calendars running horizontally across the top of the diary pages, and the compilations of information for the first edition were done by Eaton. The information, data and other materials utilized in the first edition were compiled from a number of different sources.⁴

Eaton made very few changes in the Executive Planner from 1962 through 1968. Indeed, the 1969 issue of the Executive Planner, the first issue published by Baldwin Cooke, closely followed the style of the 1968 issue. However, in 1968, Baldwin Cooke undertook an extensive study of the Executive Planner including interviews with many customers, and as a result, a number of changes were made in the 1970 issue. These changes included a different presentation style for certain sections including the addition of what plaintiff claims are "esthetic lines" to the diary pages, color art work on all "data" or information pages, a new style of cover, a new separate addresses and telephone numbers insert, a new personal data page, a new holiday page, new monthly and yearly expense summary pages, a new automobile mileage section and a new "dates to remember" section. In the 1972 edition, published in 1971, the Zodiac birthday and anniversary gift information page was added.

THE GUILFORD NO. 545 — EXECUTIVE WEEKLY MINDER

Keith Clark was formed in 1923 at which time its primary business activity consisted of the design, manufacture and sale of desk planning calendars for the office supply industry. In 1954 Keith Clark commenced the design, manufacture and sale of diaries and planning books for the advertising specialty industry. Keith Clark introduced to the commercial stationery and department store trade in 1970 its Guilford line of products for the calendar year 1971. The Guilford line consisted of various types of appointment and planning books.

Soon after the Guilford line was introduced to the trade, Keith Clark was advised by certain of its advertising specialty distributors and retail outlets that there was a demand for a planning book of greater trade utility that would compete with the more sophisticated and comprehensive planning books published by other diary manufacturers such as Baldwin Cooke. In response to this demand, preliminary discussions took place among the Keith Clark art and marketing directors and certain of its officers. As a result of these discussions, Keith Clark decided to produce the Guilford No. 545 — Executive Weekly Minder.

On October 10, 1971 a meeting took place among Keith Clark's art director, director of marketing and product review committee at which those attending the meeting had before them the 1971 Baldwin Cooke Executive Planner, representative material previously published by Keith Clark and brochures illustrating the varieties of planning books available to the public. Subsequent meetings were held at which time page layout, items to be included, type of cover and binding to be used, packaging, costs and price considerations were discussed. Discussions were also had regarding which items would have the most appeal and included the solicitation by Keith Clark of the views of its representatives and distributors.

The contents of the Guilford No. 545 — Executive Weekly Minder 1973 edition, included the following: a personal data page; a planning calendar for the current year; a diary calendar for the current year, the form of which was intended to allow the recording of various data and information; a planning calendar for the subsequent year; a holiday list for the current year; a monthly expense summary sheet; an expense summary form for the current year; a Zodiac birthday and anniversary information page; a postal information section; weights and measures information; a table setting forth decimal equivalents; pages for the recording of information concerning quarterly income, securities transactions, capital gains and losses and stock dividends; a page with three whole tabular calendars for the preceding, current and subsequent years and a section for the recording of names, addresses and telephone numbers.

The idea of the format represented by the Executive Planner's three-year calendar approach was followed. Keith Clark also decided to utilize the idea of placing woodcuts on the outer corners of the pages as Baldwin Cooke had done in the Executive Planner. Moreover, Keith Clark followed the format of the Executive Planner by placing six small consecutive monthly calendars running horizontally across the top of the open diary pages of its book.

In August, 1972 when Keith Clark introduced the Guilford No. 545 — Executive Weekly Minder, it mailed to its distributors a letter describing the work. In the letter, Keith Clark stated that its Executive Weekly Minder was similar to the one sold by Baldwin Cooke and that it was being introduced in response to requests over several years for such an item. In another letter promoting the 1974 edition of the Executive Weekly Minder, Keith Clark stated that the book had been introduced in the market pursuant to the many requests for a book that was comparable to Baldwin Cooke's Executive Planner.

VALIDITY OF BALDWIN COOKE'S 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., 98 F.2d 872, 873 (10th Cir. 1938). The originality required by the United States Constitution (Article I, Section 8, Clause 8) and the...