429 F.2d 1106 (9th Cir. 1970), 23067, Roth Greeting Cards v. United Card Co.

Docket Nº:23067.
Citation:429 F.2d 1106, 166 U.S.P.Q. 291
Party Name:ROTH GREETING CARDS, Appellant, v. UNITED CARD COMPANY, an Illinois corporation, Appellee.
Case Date:July 10, 1970
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 1106

429 F.2d 1106 (9th Cir. 1970)

166 U.S.P.Q. 291



UNITED CARD COMPANY, an Illinois corporation, Appellee.

No. 23067.

United States Court of Appeals, Ninth Circuit.

July 10, 1970

Page 1107

Willard H. Horwich (argued), and Morris W. Young, Beverly Hills, Cal., for appellant.

Harvey Grossman (argued), Morton Boren, Henry J. Shames, of Pacht, Ross, Warne, Bernhard, Sears & Nutter, Los Angeles, Cal., for appellee.

Before HAMLEY, KOELSCH and KILKENNY, Circuit Judges.

HAMLEY, Circuit Judge:

Roth Greeting Cards (Roth) and United Card Company (United), both corporations, are engaged in the greeting card business. Roth brought this suit against United to recover damages and obtain injunctive relief for copyright infringement of seven studio greeting cards. 1 After a trial to the court without a jury, judgment was entered for defendant. Plaintiff appeals.

Roth's claim involves the production and distribution by United of seven greeting cards which bear a remarkable resemblance to seven of Roth's cards on which copyrights had been granted. Roth employed a writer to develop the textual material for its cards. When Roth's president determined that a textual

Page 1108

idea was acceptable, he would integrate that text into a rough layout of a greeting card with his suggested design for the art work. He would then call in the company artist who would make a comprehensive layout of the card. If the card was approved, the artist would do a finished layout and the card would go into production.

During the period just prior to the alleged infringements, United did not have any writers on its payroll. Most of its greeting cards came into fruition primarily through the activities of United's president, Mr. Koenig, and its vice-president, Edward Letwenko.

The source of the art and text of the cards of United, here in question, is unclear. Letwenko was unable to recall the origin of the ideas for most of United's cards. He speculated that the gags used may have come from plant personnel, persons in bars, friends at a party, Koenig, or someone else. He contended that the art work was his own. But he also stated that he visited greeting card stores and gift shows in order to observe what was going on in the greeting card business. Letwenko admitted that he may have seen the Roth cards during these visits or that the Roth cards may have been in his office prior to the time that he did his art work on the United cards.

On these facts, the trial court held for defendant on alternative grounds, lack of jurisdiction and lack of infringement of any copyrightable material.

The trial court based its jurisdictional holding on 17 U.S.C. § 13 . This statute provides that no action for infringement of copyright 'shall be maintained' until the provisions of Title 17 of the United States Code with respect to the deposit of copies and registration of such work 'shall have been complied with.'

The provisions of that title with respect to the deposit of copies and registration, insofar as here relevant, are 17 U.S.C. §§ 10, 13 and 209. Under these provisions one who desires to copyright his work by publication: (1) publishes the work with an attached notice of copyright, (2) promptly deposits, in the copyright office or in the mail addressed to the Register of Copyrights, two completed copies of the work and (3) pays the prescribed fee. If these steps have been properly performed it is the duty of the Register of Copyrights to issue a certificate of registration under the seal of the copyright office.

Roth followed the described three-step procedure in seeking copyright protection for its greeting cards on June 6, 1966. The copyright office returned the applications for a change of category of registration. The revised applications were placed in the mail to the copyright office on July 27, 1966, and received there on July 29, 1966. Roth filed this action on July 27, 1966, which was the same day it mailed the revised applications, but two days before they were received by the copyright office.

In holding that Roth failed to comply with 17 U.S.C. § 13, the district court in effect held that an action is 'maintained' within the meaning of that statute when it is instituted. The court apparently reasoned therefrom that: (1) under section 13, a district court does not acquire...

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