536 F.2d 486 (2nd Cir. 1976), 1249, L. Batlin & Son, Inc. v. Snyder

Docket Nº:1249, Docket 75-7308.
Citation:536 F.2d 486
Party Name:189 U.S.P.Q. 753 L. BATLIN & SON, INC., Appellee, v. Jeffrey SNYDER d/b/a J. S. N. Y. and Etna Products Co., Inc., Appellants.
Case Date:April 12, 1976
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit
 
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Page 486

536 F.2d 486 (2nd Cir. 1976)

189 U.S.P.Q. 753

L. BATLIN & SON, INC., Appellee,

v.

Jeffrey SNYDER d/b/a J. S. N. Y. and Etna Products Co.,

Inc., Appellants.

No. 1249, Docket 75-7308.

United States Court of Appeals, Second Circuit

April 12, 1976

Submitted Jan. 19, 1976.

Page 487

Robert C. Faber, Stanley H. Lieberstein, Ostrolenk, Faber, Gerb & Soffen, New York City, for appellants.

Mark H. Sparrow, New York City (Jacobs & Jacobs, P. C., Albert L. Jacobs, Jr., New York City, of counsel), for appellee.

James E. Siegel, Myron Greenspan, Lackenbach, Lilling & Siegel, New York City, for E. Mishan & Sons, Inc., amicus curiae.

Before KAUFMAN, Chief Judge, and FEINBERG, MANSFIELD, MULLIGAN, OAKES, TIMBERS, GURFEIN, VAN GRAAFEILAND, and MESKILL, Circuit Judges.

OAKES, Circuit Judge:

Appellants Jeffrey Snyder and Etna Products Co., Inc., his licensee, appeal from a preliminary injunction granted L. Batlin & Son, Inc. (Batlin), compelling appellants to cancel a recordation of a copyright with the United States Customs Service and restraining them from enforcing that copyright. The district court held, 394 F.Supp. 1389 (S.D.N.Y.1975), as it had previously in Etna Products Co. v. E. Mishan & Sons, 75 Civ. 428 (S.D.N.Y. Feb. 13, 1975), that there was "little probability" that appellants' copyright "will be found valid in the trial on the merits" on the basis that any variations between appellants' copyrighted plastic bank and a cast iron bank in the public domain were merely "trivial," and hence appellants' bank insufficiently "original" to support a copyright. 394 F.Supp. at 1390,

Page 488

citing Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951). We agree with the district court and therefore affirm the judgment granting the preliminary injunction.

Uncle Sam mechanical banks have been on the American scene at least since June 8, 1886, when Design Patent No. 16,728, issued on a toy savings bank of its type. The basic delightful design has long since been in the public domain. The banks are well documented in collectors' books and known to the average person interested in Americana. A description of the bank is that Uncle Sam, dressed in his usual stove pipe hat, blue full dress coat, starred vest and red and white striped trousers, and leaning on his umbrella, stands on a four- or five-inch wide base, on which sits his carpetbag. A coin may be placed in Uncle Sam's extended hand. When a lever is pressed, the arm lowers, and the coin falls into the bag, while Uncle Sam's whiskers move up and down. The base has an embossed American eagle on it with the words "Uncle Sam" on streamers above it, as well as the word "Bank" on each side. Such a bank is listed in a number of collectors' books, the most recent of which may be F. H. Griffith, Mechanical Banks (1972 ed.) where it was listed as No. 280, and is said to be not particularly rare.

Appellant Jeffrey Snyder doing business as "J.S.N.Y." obtained a registration of copyright on a plastic "Uncle Sam bank" in Class G ("Works of Art") as "sculpture" on January 23, 1975. According to Snyder's affidavit, in January, 1974, he had seen a cast metal antique Uncle Sam bank with an overall height of the figure and base of 11 inches. 1 In April, 1974, he flew to Hong Kong to arrange for the design and eventual manufacture of replicas of the bank as Bicentennial items, taking the cast metal Uncle Sam bank with him. His Hong Kong buying agent selected a firm, "Unitoy," to make the plastic "prototype" because of its price and the quality of its work. Snyder wanted his bank to be made of plastic and to be shorter than the cast metal sample "in order to fit into the required price range and quality and quantity of material to be used." The figure of Uncle Sam was thus shortened from 11 to nine inches, and the base shortened and narrowed. It was also decided, Snyder averred, to change the shape of the carpetbag and to include the umbrella in a one-piece mold for the Uncle Sam figure, "so as not to have a problem with a loose umbrella or a separate molding process." The Unitoy representative made his sketches while looking at the cast metal bank. After a "clay model" was made, a plastic "prototype" was approved by Snyder and his order placed in May, 1974. The plastic bank carried the legend "CR Copyright J.S.N.Y." and was assertedly first "published" on October 15, 1974, before being filed with the Register of Copyrights in January, 1975.

Appellee Batlin is also in the novelty business and as early as August 9, 1974, ordered 30 cartons of cast iron Uncle Sam mechanical banks from Taiwan where its president had seen the bank made. When he became aware of the existence of a plastic bank, which he considered "an almost identical copy" of the cast iron bank, Batlin's trading company in Hong Kong procured a manufacturer and the president of Batlin ordered plastic copies also. Beginning in April, 1975, Batlin was notified by the United States Customs Service that the plastic banks it was receiving were covered by appellants' copyright. In addition the Customs Service was also refusing entry to cast iron banks previously ordered, according to the Batlin affidavit. Thus Batlin instituted suit for a judgment declaring appellants' copyright void and for damages for unfair competition and restraint of trade. The sole question on this appeal is whether Judge Metzner abused his discretion in granting Batlin a preliminary injunction. We find that he did not.

Page 489

This court has examined both the appellants' plastic Uncle Sam bank made under Snyder's copyright and the uncopyrighted model cast iron mechanical bank which is itself a reproduction of the original public domain Uncle Sam bank. Appellant Snyder claims differences not only of size but also in a number of other very minute details: the carpetbag shape of the plastic bank is smooth, the iron bank rough; the metal bank bag is fatter at its base; the eagle on the front of the platform in the metal bank is holding arrows in his talons while in the plastic bank he clutches leaves, this change concededly having been made, however, because "the arrows did not reproduce well in plastic on a smaller size." The shape of Uncle Sam's face is supposedly different, as is the shape and texture of the hats, according to the Snyder affidavit. In the metal version the umbrella is hanging loose while in the plastic item it is included in the single mold. The texture of the clothing, the hairline, shape of the bow ties and of the shirt collar and left arm as well as the flag carrying the name on the base of the statue are all claimed to be different, along with the shape and texture of the eagles on the side. Many of these differences are not...

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