511 F.2d 904 (3rd Cir. 1975), 74--1456, Universal Athletic Sales Co. v. Salkeld

• Date: 28 February 1975
• Citation: 511 F.2d 904
• Docket Number: 74--1456.
• Parties: 185 U.S.P.Q. 76 UNIVERSAL ATHLETIC SALES CO., a corporation v. Larry SALKELD et al. Appeal of Donald E. PINCHOCK et al.
• Court: U.S. Court of Appeals — Third Circuit

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511 F.2d 904 (3rd Cir. 1975)

185 U.S.P.Q. 76

UNIVERSAL ATHLETIC SALES CO., a corporation

v.

Larry SALKELD et al.

Appeal of Donald E. PINCHOCK et al.

No. 74--1456.

United States Court of Appeals, Third Circuit

February 28, 1975

Argued Jan. 9, 1975.

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[Copyrighted Material Omitted]

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Thomas H. Murray, Brown, Murray, Flick & Peckham, Pittsburgh, Pa., Hymen Diamond, Monroeville, Pa., Floyd B. Carothers, Carothers & Carothers Pittsburgh, Pa., Lawrence G. Zurawsky, Pittsburgh, Pa., for appellants.

Robert D. Yeager, Yeager, Stein & Wettach, Pittsburgh, Pa., Lewis M. Dalgarn, Los Angeles, Cal., for appellee; Nilsson, Robbins, Bissell, Dalgarn & Berliner, Los Angeles, Cal., of counsel.

OPINION

Before ALDISERT, WEIS and GARTH, Circuit Judges.

WEIS, Circuit Judge.

A chart picturing approved methods to develop physical prowess on a weight-lifting machine leads us to an intellectual exercise in the copyright arena. While weight lifting has the virtue of a rigidly disciplined routine, the copyright law offers, in the main, elusive and nebulous abstractions. And so, while we conclude that the district court erred in finding infringement, we do so without the certainty and satisfaction that accompanies the execution of a perfect 'press.'

A basic principle, easy to articulate but difficult to apply, is that the expression of an idea may be protected by copyright but the idea itself cannot. The case at bar presents us with the issue whether the defendants' expression of a concept, basic to the use of both its product and the plaintiff's, was so substantially similar as to amount to an infringement.

The individual defendants formed the Super Athletics Corporation in 1971 to manufacture and distribute a multi-station exercise machine designed so that its use brings about the body motions involved in weight lifting. To assist its customers, the defendants prepared a wall chart which utilized sketches, sometimes called 'stick figures,' to depict certain exercises performed on the machine together with textual material to explain the specific exercises and weight lifting in general.

The plaintiff, Universal Athletic Sales, is a manufacturer of a similar machine, and in 1969 and 1970 it copyrighted an exercise wall chart which it furnished its customers along with a Coaches' Training Manual. Alleging that the defendants had infringed its copyrights, the plaintiff moved for and was granted a preliminary injunction against further circulation of the defendants' chart on April 13, 1972. ¹ The order specified that the injunction would issue upon the posting of a $5,000 bond by plaintiff Universal. This condition was not satisfied until April 21, 1972, and in the interim a number of the defendants' charts were distributed to customers and prospective buyers. At least one additional mailing occurred after the bond had been posted. After a hearing, the district court found the defendants in civil contempt for all the acts of distribution after April 13, 1972 and assessed damages and counsel fees.

The plaintiff then moved for summary judgment, relying upon portions of discovery depositions of various of the defendants, parts of the testimony taken during the contempt proceeding, and an analysis of similarities between the two

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charts. After argument, the district court filed an opinion granting summary judgment. This appeal was taken from that judgment as well as from the finding of civil contempt.

To establish a copyright infringement, the holder must first prove that the defendant has copied the protected work and, second, that there is a substantial similarity between the two works. The criterion for the latter requirement is whether an ordinary lay observer would detect a substantial similarity between the works. Ideal Toy Corporation v. Fab-Lu Ltd., 360 F.2d 1021 (2d Cir. 1966). Phrased in an alternative fashion, it must be shown that copying went so far as to constitute improper appropriation, the test being the response of the ordinary lay person. Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946). See also Nimmer on Copyright § 143.53 (1973 ed.).

As to the first issue, that of copying, the district court found that, although there was a dispute as to whether the stick figures in the plaintiff's chart were traced by one Hudson, an employee of the defendants, or were merely copied freehand, the distinction (i.e. between copying and tracing) was not material. ² Having concluded that there was copying, the court found for the plaintiff.

The court made no specific finding, however, that would meet the second test--that of substantial similarity in the sense of an appropriation of the original work. It did, however, refer to the findings made when the preliminary injunction was issued. At that time, the district judge determined that there was 'substantial similarity' between the two charts. After applying the test of whether an average lay observer would so find, the court proceeded to analyze in detail various stick figures, comparing the position of arms, legs, etc. This 'dissection' of the two works is an approved way of pinpointing similarities in a search to establish the facts of copying and of access to the copyrighted material where such proof is otherwise lacking.

But, substantial similarity to show that the original work has been copied is not the same as substantial similarity to prove infringement. As the Arnstein case points out, dissection and expert testimony in the former setting are proper but are irrelevant when the issue turns to unlawful appropriation. While '(r)ose is a rose is a rose is a rose,' substantial similarity is not always substantial similarity.

We conclude that the entry of summary judgment in favor of the plaintiff must be vacated because the district court did not find that such a quantum of substantial similarity existed as to constitute an infringement. Ordinarily, a remand to the district court would be required. However, based on an observation of the charts which are in the record, we have concluded that there was no infringement. Since no question of credibility is involved in this phase of the case, the Court of Appeals is in as good a position to determine the question as is the district court. Puddu v. Buonamici Statuary, Inc., 450 F.2d 401 (2d Cir. 1971); Concord Fabrics Inc. v. Marcus Brothers Textile Corp., 409 F.2d 1315 (2d Cir. 1969); Millworth Converting Corp. v. Slifka, 276 F.2d 443 (2d Cir. 1960). See Nimmer on Copyright § 140.

A review of copyright infringement decisions confirms the observation that most cases are decided on an ad hoc basis. Judge Hand aptly expressed the state of the law when he said that '(t)he test for infringement of a copyright is of necessity vague,' Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960), and that '. . . the line, where-ever (sic) it is drawn, will seem arbitrary . . .,' Nichols v. Universal Pictures Corp., 45 F.2d 119, 122 (2d Cir. 1930), cert. denied 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931). It

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is...