421 F.2d 279 (5th Cir. 1970), 26880, Tennessee Fabricating Co. v. Moultrie Mfg. Co.

Docket Nº:26880.
Citation:421 F.2d 279, 164 U.S.P.Q. 481
Party Name:TENNESSEE FABRICATING COMPANY, d/b/a TFC Co., Plaintiff-Appellant, v. MOULTRIE MANUFACTURING COMPANY and William E. Smith, Defendants-Appellees.
Case Date:January 15, 1970
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

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421 F.2d 279 (5th Cir. 1970)

164 U.S.P.Q. 481

TENNESSEE FABRICATING COMPANY, d/b/a TFC Co., Plaintiff-Appellant,


MOULTRIE MANUFACTURING COMPANY and William E. Smith, Defendants-Appellees.

No. 26880.

United States Court of Appeals, Fifth Circuit.

January 15, 1970

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Raymon Sauer, Memphis, Tenn., A. J. Whitehurst, Thomasville, Ga., for plaintiff-appellant.

Jim W. Gipple, Stevens, Davis, Miller & Mosher, Washington, D.C., Sam J. Gardner, Jr., Moultrie, Ga., for defendants-appellees.

Before RIVES, COLEMAN and MORGAN, Circuit Judges.

RIVES, Circuit Judge.

This action for copyright infringement was heard before the court without a jury. Judge Elliott entered judgment for the defendants based upon succinct findings of fact and conclusions of law reported in 159 U.S.P.Q. 363.

Certificate of registration dated September 6, 1960, Class G. No. 26299 is to a 12' x 12' architectural metal casting unit intended for use in combination or singly for a decorative screen or room divider to 'finish up' a space. The judgment was based upon five different grounds which we have rearranged for convenience of discussion: (1) that the

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architectural unit does not possess the minimal degree of creativity required of a work of art; (2) that plaintiff offered no evidence of initial publication with copyright notice; (3) that there was no evidence that all copies of the unit manufactured by the defendant bore the copyright notice; (4) that the notation 'TFC Co.' on the unit is not adequate notice of copyright; (5) that the photographic representations of the unit in defendant Moultrie's catalog did not constitute copyright infringement but were within the doctrine of 'fair use.' We do not agree with the district court on any one of the five grounds, nor on its further finding as to (6) whether the changes which defendants made in its revised design suffice to avoid infringing plaintiff's copyright. Answering that question in the negative, we reverse and remand for a determination of damages and entry of judgment enjoining further infringement and awarding damages to the plaintiff.

(1) Creativity.

The filigree pattern of the unit was formed entirely of intercepting straight lines and arc lines, but was original with the artist employed by plaintiff. It proved to be acceptable to architects, contractors and decorators and commercially successful. In 1962 the defendants came into possession of a copy of the unit on which the copyright notice had been obscured by paint. Using that unit as a mold the defendants made a pattern from the design and marketed the same. They also made a catalog and an advertising mat of the design and distributed them by mail and through their sales representative.

Defendants' use of the design first came to the attention of plaintiff's president in a news release in the Flower & Garden Magazine of September 1962. He telephoned to defendant Smith, the president of the defendant Moultrie, 'telling him that this was ours, and he (Smith) intimated that they would do nothing further, and that this would be dropped.' The defendants redesigned their unit by adding four intercepting straight lines in the form of a diamond to the filigree pattern, and made no further sales of a unit identical with plaintiffs. The defendants, however, continued to distribute the catalog and some 2 years later, August 24, 1964, plaintiff's counsel wrote a letter demanding the termination of the production of the design and payment of damages. Mr. Smith replied on August 26, stating that the design was being withdrawn from the new catalog which would be released in January or February of 1965, and that if any orders were received for the product they would be forwarded on to the plaintiff. The defendants, however, continued to use the old catalog until sometime in 1966 and the price list on the item until January 1, 1968. In the new catalog there were contained photographic representations of the design.

'In order to be acceptable as a work of art, the work must embody some creative authorship in its delineation or form.' Rules and Regulations of the Copyright Office, 17 U.S.C.A. § 207 Rule 202.10(b); 37 C.F.R. § 202.10(b). 'In order to be copyrightable, a work must contain at least a certain minimum amount of authorship in the form of original literary, artistic, or musical expression.' Copyright Office Cir. 32. The circular lists as 'common examples of uncopyrightable works': 'time cards, report forms, graph paper, account books, diaries, checks, score cards, address books, order forms, vouchers, and the like.' On the other hand, lack of artistic merit is no bar to copyright. Rushton v. Vitale, 2 Cir. 1955, 218 F.2d 434, 435. Compare 18 C.J.S. Copyright and Literary Property § 26, p. 169.

'All that is needed to satisfy both the Constitution and the statute is that the 'author' contributed something more than a 'merely trivial' variation, something recognizably 'his own.' Originality in this context 'means little more than a prohibition of actual copying.' No matter how poor artistically the 'author's' addition, it is

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enough if it be his own. (Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 23 S.Ct. 298, 47 L.Ed. 460).'

Alfred Bell & Co. v. Catalda Fine Arts, 2 Cir. 1951, 191 F.2d 99, 102-103. 1 That the filigree pattern on plaintiff's unit was designed by his artist is conceded. The defendants displayed a persistent desire to reproduce or capitalize on the unit. The language of Justice Holmes in Bleistein v. Donaldson Lithographing Co., supra, is pertinent:

'It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Yet if they command the interest of any public, they have a commercial value,-- it would be bold to say that they have not an aesthetic and educational value,-- and the taste of any public is not to be treated with contempt. It is an ultimate fact for the moment, whatever may be our hopes for a change. That these pictures had their worth and their success is sufficiently shown by the desire to reproduce them without regard to the plaintiffs' rights.'

188 U.S. at 251, 252, 23 S.Ct. at 300.

We hold that plaintiff's architectural unit possessed at least the minimal degree of creativity required for copyright.

(2) Initial Copyright Notice.

Initial publication with copyright notice is a prerequisite...

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