Herbert Rosenthal Jewelry Corp. v. Kalpakian

• Decision Date: 07 July 1971
• Docket Number: No. 24990.,24990.
• Parties: HERBERT ROSENTHAL JEWELRY CORP., Plaintiff-Appellant, v. Edward and Lucy KALPAKIAN, etc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

446 F.2d 738 (1971)

HERBERT ROSENTHAL JEWELRY CORP., Plaintiff-Appellant, v. Edward and Lucy KALPAKIAN, etc., Defendants-Appellees.

No. 24990.

United States Court of Appeals, Ninth Circuit.

July 7, 1971.

Charles Sonnenreich (argued), New York City, Levy & Tannenbaum, Los Angeles, Cal., for plaintiff-appellant.

Marvin Jubas (argued), of Spensley, Horn & Jubas, Los Angeles, Cal., for defendants-appellees.

Before BROWNING, ELY, and HUFSTEDLER, Circuit Judges.

BROWNING, Circuit Judge:

Plaintiff and defendants are engaged in the design, manufacture, and sale of fine jewelry.

Plaintiff charged defendants with infringing plaintiff's copyright registration of a pin in the shape of a bee formed of gold encrusted with jewels. A consent decree was entered, reciting that the parties had agreed to a settlement of the action and entry of the decree. It provided that plaintiff's copyright of the jeweled bee was "good and valid in law," that defendants had manufactured a jeweled bee "alleged to be similar," and that defendants were enjoined from infringing plaintiff's copyright and from manufacturing or selling copies of plaintiff's jeweled bee pin.

Later plaintiff filed a motion for an order holding defendants in contempt of the consent decree. The district court, after an evidentiary hearing, found that while defendants had manufactured and sold a line of jeweled bee pins, they designed their pins themselves after a study of bees in nature and in published works and did not copy plaintiff's copyrighted bee. The court further found that defendants' jeweled bees were "not substantially similar" to plaintiff's bees, except that both "do look like bees." The court concluded that defendants had neither infringed plaintiff's copyright nor violated the consent decree, and entered a judgment order denying plaintiff's motion. We affirm.

I

Both in this court and below, the parties have assumed that defendants are bound by their concession of the validity of plaintiff's copyright in the consent decree. Although we accept that assumption for purposes of this litigation, we expressly save the question whether the line of cases upon which the assumption is based, see Siebring v. Hansen, 346 F.2d 474, 477 (8th Cir. 1965), and cases cited, survived Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969), and in this circuit, Massillon-Cleveland-Akron Sign Co. v. Golden State Advertising Co., 444 F.2d 425 (9th Cir. 1971). See also, Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971).

II

Plaintiff contends that its copyright registration of a jeweled bee entitles it to protection from the manufacture and sale by others of any object that to the ordinary observer is substantially similar in appearance. The breadth of this claim is evident. For example, while a photograph of the copyrighted bee pin attached to the complaint depicts a bee with nineteen small white jewels on its back, plaintiff argues that its copyright is infringed by defendants' entire line of a score or more jeweled bees in three sizes decorated with from nine to thirty jewels of various sizes, kinds, and colors.

Although plaintiff's counsel asserted that the originality of plaintiff's bee pin lay in a particular arrangement of jewels on the top of the pin, the elements of this arrangement were never identified. Defendants' witnesses testified that the "arrangement" was simply a function of the size and form of the bee pin and the size of the jewels used. Plaintiff's counsel, repeatedly pressed by the district judge, was unable to suggest how jewels might be placed on the back of a pin in the shape of a bee without infringing plaintiff's copyright. He eventually conceded, "not being a jeweler, I can't conceive of how he might rearrange the design so it is dissimilar."

If plaintiff's understanding of its rights were correct, its copyright would effectively prevent others from engaging in the business of manufacturing and selling jeweled bees. We think plaintiff confuses the balance Congress struck between protection and competition under the Patent Act and the Copyright Act.

The owner of a patent is granted the exclusive right to exploit for a period of seventeen years (a maximum of fourteen years for design patents) the conception that is the subject matter of the patent. 35 U.S.C. §§ 154, 173. The grant of this monopoly, however, is carefully circumscribed by substantive and procedural protections. To be patentable the subject matter must be new and useful, and represent a nonobvious advance — one requiring "more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business"; an advance that would not be obvious to a hypothetical person skilled in the art and charged with knowledge of all relevant developments publicly known to that point in time. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). A patent is granted only after an independent administrative inquiry and determination that these substantive standards have been met. 35 U.S.C. § 131. This determination is subject to both administrative and court review. 35 U.S.C. §§ 134, 141, 145, 146.

Copyright registration, on the other hand, confers no right at all to the conception reflected in the registered subject matter. "Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea — not the idea itself." Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954) (footnote omitted). Accordingly, the prerequisites for copyright registration are minimal. The work offered for registration need only be the product of the registrant. So long as it is not a plagiarized copy of another's effort, there is no requirement that the work differ substantially from prior works or that it contribute anything of value. "The copyright protects originality rather than novelty or invention." Id. at 218, 74 S.Ct. at 471. A copyright is secured simply by publishing the work with the required notice, 17 U.S.C. § 10, and registration is accomplished simply by filing a claim and depositing copies of the work with the Register of Copyrights, 17 U.S.C. §§ 11, 13. There is no administrative investigation or determination of the validity of the claim. A certificate is refused only if the object falls outside the broad category of matter subject to copyright registration. 17 U.S.C. §§ 4-5. A copyright affords little protection. It confers "only `the sole right of multiplying copies.' Absent copying there can be no infringement of copyright." Mazer v. Stein, supra, 347 U.S. at 218, 74 S.Ct. at 471 (footnotes omitted). Because the registrant's protection is limited and the social cost therefore small, the life of the copyright is long and, under current proposals, potentially even longer — now twenty-eight years plus a renewal period of twenty-eight more, 17 U.S.C. § 24, and, under Copyright Revision Bill § 543, 91st Congress, 1st Session, the life of the author plus fifty years.

Obviously a copyright must not be treated as equivalent to a patent lest long continuing private monopolies be conferred over areas of gainful activity without first satisfying the substantive and procedural prerequisites to the grant of such privileges.

Because copyright bars only copying, perhaps this case could be disposed of on the district court's finding that defendants did not copy plaintiff's bee pin. It is true that defendants had access to plaintiff's pin and that there is an obvious similarity between plaintiff's pin and those of defendants. These two facts constitute strong circumstantial evidence of copying. But they are not conclusive, Overman v. Loesser, 205 F.2d 521, 523 (9th Cir. 1953); Nimmer on Copyright §§ 139.4, 141.2, and there was substantial evidence to support the trial court's finding that defendants' pin was in fact an independent creation. Defendants testified to independent creation from identified...