Franklin Mint Corp. v. National Wildlife Art Exchange, Inc.

• Decision Date: 17 April 1978
• Docket Number: Nos. 77-1525,s. 77-1525
• Citation: 575 F.2d 62
• Parties: , 1978-81 Copr.L.Dec. 25,004, 3 Media L. Rep. 2169 FRANKLIN MINT CORPORATION, Appellant in 77-1527, v. NATIONAL WILDLIFE ART EXCHANGE, INC. and Ralph H. Stewart. NATIONAL WILDLIFE ART EXCHANGE, INC., Appellant in 77-1526, v. The FRANKLIN MINT GALLERY OF AMERICAN ART, INC. Appeal of NATIONAL WILDLIFE ART EXCHANGE, INC., and Ralph H. Stewart, in 77-1525. to 77-1527.
• Court: U.S. Court of Appeals — Third Circuit

Page 62

575 F.2d 62

197 U.S.P.Q. 721, 1978-81 Copr.L.Dec. 25,004,

3 Media L. Rep. 2169

FRANKLIN MINT CORPORATION, Appellant in 77-1527, v. NATIONAL WILDLIFE ART EXCHANGE, INC. and Ralph H. Stewart.

NATIONAL WILDLIFE ART EXCHANGE, INC., Appellant in 77-1526, v. The FRANKLIN MINT GALLERY OF AMERICAN ART, INC.

Appeal of NATIONAL WILDLIFE ART EXCHANGE, INC., and Ralph H.

Stewart, in 77-1525.

Nos. 77-1525 to 77-1527.

United States Court of Appeals Third Circuit.

Argued Feb. 22, 1978.

Decided April 17, 1978.

William C. McCoy, Jr., Bosworth, Sessions & McCoy, Cleveland, Ohio, Theodore J. Martineau, Ballard, Spahr, Andrews & Ingersoll, Philadelphia, Pa., for Nat. Wildlife Art Exchange, Inc., and Ralph H. Stewart.

Arthur H. Seidel, Roberta L. Jacobs, Seidel, Gonda & Goldhammer, Philadelphia, Pa., for Franklin Mint Corp.; R. E. LaPorte, Franklin Mint Corp., Franklin Center, Pa., of counsel.

Before ALDISERT, VAN DUSEN and WEIS, Circuit Judges.

OPINION OF THE COURT

WEIS, Circuit Judge.

Nearly two centuries ago, Lord Mansfield identified the conflicting interests underlying copyright law in his oft quoted warning:

"(W)e must take care to guard against two extremes equally prejudicial; the one, that men of ability, who have employed their time for the service of the community, may not be deprived of their just merits, and the reward of their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded." Cary v. Longman, 102 Eng.Rep. 138, 140 (K.B.1801), quoting Sayre v. Moore (Hil.1785).

The necessity of balancing these divergent concepts is illustrated in this case in which we are asked to determine whether an artist infringed a copyright, which he had once owned, by painting another work portraying the same general subject matter. The district court found no infringement and, being in agreement, we affirm.

In a series of suits and cross suits, Albert Earl Gilbert and Franklin Mint Corporation were accused of infringing on the purported copyright of National Wildlife Art Exchange, Inc. to a painting, "Cardinals on Apple Blossom." After a bench trial, the district court found that the copyright was valid, but there had been no copying and, consequently, no infringement. Companion cases of defamation, disparagement, and unfair competition were also decided by the district court but have not been pursued on these appeals, which are confined to the infringement claim.

In late July or early August, 1972 Ralph H. Stewart began to implement a plan of organizing a business enterprise which would publish and market limited edition prints of wildlife. He telephoned Gilbert, a nationally recognized wildlife artist, and asked him to paint a water color of cardinals. Gilbert agreed and in the following months completed "Cardinals on Apple Blossom," using as source material color slides, photographs, sketches, and two stuffed cardinal specimens. He signed and dated the painting, and placed a copyright notice on it before August 25, 1972, the day when Stewart came to the artist's residence and approved the rendition. While there, Stewart gave Gilbert a check in the amount of $1,500, bearing on the back a notation, "For Cardinal painting 20 X 24 including all rights reproduction etc." On the following day, Stewart and Gilbert discussed a proposal to incorporate National Wildlife Exchange, Inc. to market prints of Gilbert's future works. They agreed in general on the plan but it was understood that at a later date attorneys for both parties would draw up a contract in terms meeting their approval. Gilbert endorsed Stewart's check and cashed it on August 28, 1972.

Early in September, 1972, Gilbert delivered the painting to Stewart. That same month, Stewart incorporated National and transferred the painting to it. In connection with his activities for National, an outline of the design of "Cardinals on Apple Blossom" was embossed on his white business cards. No color was applied to the design and no copyright notice was printed on the cards.

National placed a representation of the painting in the fall 1972 Newsletter to Members of the Cornell University Laboratory of Ornithology. No copyright notice of National was affixed but Gilbert's was visible. National published a brochure encaptioned "Introducing a First," in December, 1972 which sought orders for prints of "Cardinals on Apple Blossom," and in the next month, it distributed an edition limited to 300 prints of the painting. All bore Gilbert's copyright notice. A year later, National filed for copyright registration of "Cardinals on Apple Blossom" which was subsequently granted.

Gilbert and National ultimately were unable to agree upon terms of the business venture discussed in August of 1972, and in January, 1975, Gilbert agreed to paint a series of four water color birdlife pictures, including one of cardinals, for Franklin Mint Corporation. The series was completed in January of 1976, and included a work entitled "The Cardinal." Franklin made engravings of the four paintings which were sold as a group and not separately.

In painting "The Cardinal," Gilbert used some of the same source material he had utilized for "Cardinals on Apple Blossom," including preliminary sketches from his collection, photographs, slides, and a working drawing. In addition, however, he used other slides of foliage taken after completion of the earlier painting and sketches specifically developed for "The Cardinal," as well as a series of cardinal photographs. He did not use the stuffed bird specimens which had served as models for "Cardinals on Apple Blossom."

After hearing extensive testimony and viewing Gilbert's rendition of a cardinal painted in the courtroom during the trial, the district judge found that the artist had not copied "Cardinals on Apple Blossom" when he painted "The Cardinal." The court also determined that title to the copyright of "Cardinals on Apple Blossom" passed to Stewart when he purchased the painting with the $1,500 check bearing a limited endorsement. In addition, the court ruled that distribution of Stewart's business card did not constitute a publication without notice which would forfeit National's copyright protection. And, since Gilbert's copyright notice appeared on the picture in the Cornell bulletin, the court decided that no forfeiture occurred by such publication.

Unlike a patent, a copyright protects originality rather than novelty or invention conferring on the owner the sole right to reproduce the work and to "control all the channels through which . . . work or any fragments of . . . work reach the market." Chafee, Reflections on the Law of Copyright: I, 45 Colum.L.Rev. 501, 505 (1945). It has been said: " Originality in this context 'means little more than a prohibition of actual copying.' " Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 103 (2d Cir. 1951) (citations omitted). If there is no copying, there can be no infringement. Mazer v. Stein, 347 U.S. 201, 218, 74 S.Ct. 460, 98 L.Ed. 630 (1954); Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904 (3d Cir.), cert. denied sub nom. Universal Athletic Sales Co. v. Pinchock, 423 U.S. 863, 96 S.Ct. 122, 46 L.Ed.2d 92 (1975); Alfred Bell & Co. v. Catalda Fine Arts, supra, at 103 & n.16. Copying done from memory is as objectionable as that done by tracing or direct view, Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 741 (9th Cir. 1971); Wihtol v. Wells, 231 F.2d 550 (7th Cir. 1956). Circumstantial evidence of access to the protected work and substantial similarity between it and the alleged infringing work can be used to infer copying when direct evidence is lacking. See Reyher v. Children's Television Workshop, 533 F.2d 87 (2d Cir.), cert. denied, 429 U.S. 980, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946), cert. denied, 330 U.S. 851, 67 S.Ct. 1096, 91 L.Ed. 1294 (1947).

To reconcile the competing societal interests inherent in the copyright law, copyright protection has been extended only to the particular expression of an idea and not to the idea itself. See Mazer v. Stein, supra, 347 U.S. at 217-18, 74 S.Ct. 460; Baker v. Selden, 101 U.S. 99, 102-03, 25 L.Ed. 841 (1879). In Dymow v. Bolton, 11 F.2d 690, 691 (2d Cir. 1926), the court observed:

"Just as a patent affords protection only to the means of reducing an inventive idea to practice, so the copyright law protects the means of expressing an idea; and it is as near the whole truth as generalization can usually reach that, if the same idea can be expressed in a plurality of totally different manners, a plurality of copyrights may result and no infringement will exist."

See also Comment, "Expression" and "Originality" in Copyright Law, 11 Washburn L.J. 440 (1972).

Since copyrights do not protect thematic concepts, the fact that the same subject matter may be present in two paintings does not prove copying or infringement. Indeed, an artist is free to consult the same source for another original painting. As Justice Holmes stated: "Others are free to copy the original (subject matter). They are not free to copy the copy." Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249, 23 S.Ct. 298, 299, 47 L.Ed. 460 (1903).

Precision in marking the boundary between the unprotected idea and the protected expression, however, is rarely possible, see Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960); Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931), and the line between copying and appropriation is often blurred. Troublesome, too, is the fact that the same general principles are applied in claims involving plays, novels, sculpture, maps, directories of information, musical compositions, as well as artistic paintings. Isolating the idea from the expression and determining the extent of copying required...