450 F.2d 401 (2nd Cir. 1971), 121, Puddu v. Buonamici Statuary, Inc.

Docket Nº:121, 35240.
Citation:450 F.2d 401, 171 U.S.P.Q. 709
Party Name:Angelo R. PUDDU and Puddu & Martinelli, Inc., Plaintiffs-Appellants, v. BUONAMICI STATUARY, INC., Defendant-Appellee.
Case Date:November 03, 1971
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 401

450 F.2d 401 (2nd Cir. 1971)

171 U.S.P.Q. 709

Angelo R. PUDDU and Puddu & Martinelli, Inc., Plaintiffs-Appellants,


BUONAMICI STATUARY, INC., Defendant-Appellee.

No. 121, 35240.

United States Court of Appeals, Second Circuit.

November 3, 1971

Argued Oct. 14, 1971.

Stanford A. Chalson, New York City (Goldfarb & Chalson, New York City,

Page 402

and Kenneth S. Goldfarb, New York City, of counsel), for plaintiffs-appellants.

Harvey Stuart, New York City (Hoffinger & Stuart, New York City, of counsel), for defendant-appellee.

Before FRIENDLY, Chief Judge, CLARK, Associate Justice Retired, [*] and KAUFMAN, Circuit Judge.

FRIENDLY, Chief Judge:

Plaintiffs Angelo R. Puddu, and his licensee, Puddu & Martinelli, Inc., a New York corporation of which he is the sole stockholder, appeal from an order of the District Court for the Southern District of New York dismissing two complaints wherein they sought relief with respect to the defendant's alleged infringement of 12 copyrights owned by Puddu relating to statuettes of elves carrying drums, mandolins, flutes, violins and harps. Four of these copyrights concerned a line marketed by plaintiffs in 1964; the others concerned a line marketed in 1965. 1 Judge Tyler dismissed the complaints on two independent grounds. He considered that the copyrighted statuettes were not sufficiently different from a 1963 uncopyrighted line as to possess the originality required for a copyright. Alternatively he held that the statuettes did not carry notices of copyright adequate to comply with 17 U.S.C. § 19.

Although "[t]he Copyright Act nowhere expressly invokes the requirement of originality," courts have uniformly inferred this from the constitutional and statutory condition of authorship. Nimmer, Copyright, § 10 at 32 (1971 ed.). However, originality has been considered to mean "only that the work owes its origin to the author, i. e., is independently created and not copied from other works." Id. § 11 at 33 (footnote omitted). Plaintiffs' employee, Metcalf testified without contradiction that he had sculpted all the copyrighted statuettes "from scratch." While there is a strong family resemblance between the copyrighted and the uncopyrighted models, the differences suffice to satisfy the modest requirement of originality laid down by the Supreme Court in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 252, 23 S.Ct. 298, 47 L.Ed. 460 (1903) and by this court in Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2 Cir. 1951), and Millworth Converting Corp. v. Slifka, 276 F.2d 443, 444-445 (2 Cir. 1960). While the district court made much of the fact that defendant's statuettes differ from the copyrighted models in minor respects, that does not carry the day for the defendant unless the differences are sufficient to negate infringement. The tests for eligibility for copyright and avoidance of infringement are not the same. Originality sufficient for copyright protection exists if the "author" has introduced any element of novelty as contrasted with the material previously known to him. Introduction of a similar element by the copier of a copyrighted design will not avoid liability for infringement if "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2 Cir. 1960). While in the Millworth case we found the differences in the accused product sufficient to negate infringement, we do not read the district court's opinion as making that finding here, and since none of the

Page 403

statuettes in suit have been exhibited to us, see infra, we cannot find this on our own.

While we thus cannot hold that the plaintiff's statuettes lacked that modicum of originality necessary for copyright protection, we sustain the district court's decision on the alternate ground there advanced. Section 10 of the Copyright Act provides that any person entitled thereto "may secure copyright for his work by publication thereof with the notice of copyright required by this title; and such notice shall be affixed to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor. * * *" Section 19 of the Copyright Act, as amended in 1954, provides in pertinent part: 2

The notice of copyright required by section 10 of this title shall consist either of the word "Copyright", the abbreviation "Copr.", or the symbol "©", accompanied by the name of the copyrighted proprietor, and if the work be a printed literary, musical, or dramatic work, the notice shall include also the year in which the copyright was secured by publication. In the case, however, of copies of works specified in subsections (f) to (k), inclusive, of section 5 of this title, the notice may consist of the letter C enclosed within a circle, thus ©, accompanied by the initials, monogram, mark, or symbol of the copyright proprietor: Provided, that on some accessible portion of such copies or of the margin, back, permanent base, or pedestal, or of the substance on which such copies shall be mounted, his name shall appear. * * *"

In Herbert Rosenthal Jewelry Corp. v. Grossbardt, 436 F.2d 315, 317-319 (2 Cir. 1970), our latest discussion of questions like those raised here, which was not cited in the briefs of either side, we pointed out that the 1954 amendment of the first sentence of § 19, made for another purpose, had the unintended effect of enabling copyright holders to argue that trademarks or initials could qualify under the first sentence, although the clear antinomy in the second sentence made it apparent that, in order to satisfy that, the full name must somewhere appear.

The district court found that plaintiffs endeavored to comply with § 19 in their 1964 line by placing on the base of each statuette "ARP" and a © and embossing on the back of each elf additional markings, "presumably purporting to be the name, Angelo R. Puddu, but which I cannot decipher, even with the aid of a powerful reading glass." On April 2, 1964,...

To continue reading