711 F.2d 966 (11th Cir. 1983), 81-7002, John H. Harland Co. v. Clarke Checks, Inc.

Docket Nº:81-7002.
Citation:711 F.2d 966
Party Name:561 JOHN H. HARLAND COMPANY, Plaintiff-Appellee, Cross-Appellant, v. CLARKE CHECKS, INC., Defendant-Appellant, Cross-Appellee.
Case Date:August 08, 1983
Court:United States Courts of Appeals, Court of Appeals for the Eleventh Circuit

Page 966

711 F.2d 966 (11th Cir. 1983)


JOHN H. HARLAND COMPANY, Plaintiff-Appellee, Cross-Appellant,


CLARKE CHECKS, INC., Defendant-Appellant, Cross-Appellee.

No. 81-7002.

United States Court of Appeals, Eleventh Circuit

August 8, 1983

Page 967

[Copyrighted Material Omitted]

Page 968

[Copyrighted Material Omitted]

Page 969

Donald R. Commuzzi, Gale R. Peterson, Charles W. Hanor, San Antonio, Tex., for defendant-appellant, cross-appellee.

King & Spalding, R. Byron Attridge, Nolan C. Leake, Atlanta, Ga., for plaintiff-appellee, cross-appellant.

Appeals from the United States District Court for the Northern District of Georgia.

Before HILL and ANDERSON, Circuit Judges, and LYNNE [*], District Judge.


In this case, we are required to enter once again "the rather swampy area of unfair competition." B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d 1254 (5th Cir.1971) (Goldberg, J.). The court below dismissed appellee's claim for copyright infringement, but awarded damages and granted injunctive relief for trademark infringement, trade dress infringement, and a variety of state law claims. After wading through a morass of exhibits, briefs and record volumes, we affirm the judgments rendered below but remand so that the trial court can mark out a clearer path for appellants to follow through the slough of unfair competition law.


John H. Harland Co. ("Harland"), a Georgia corporation with headquarters in Atlanta, is a major manufacturer and seller of bank stationery products, including personalized bank checks. Clarke Checks, Inc. ("Clarke"), a Texas corporation with headquarters in San Antonio, also manufactures and sells bank stationery products, including personalized bank checks. Unlike Harland, which markets its products nationally, Clarke's business is primarily based in the south and southeastern portions of the United States. Both companies sell their products through catalogs and brochures which are shown to consumers by new accounts personnel at banking institutions.

Harland and Clarke, as well as other bank stationery companies, have long manufactured three-checks-to-a-page desk-style checkbooks. In these checkbooks, the checks typically are attached to permanent check stubs which can be used to record check transactions. A perforation makes it easy to detach the check from the stub, which remains in the checkbook as a permanent record. Such desk-style checkbooks are relatively large and, unlike wallet-style checkbooks, not readily portable. Although a person can remove one or more checks from the checkbook and carry them to other locations, the checkwriter does not have either a stub or a ledger on which to record the transaction. Thus, this type of checkbook traditionally has been used primarily for business accounts rather than personal accounts.

In 1976, Harland began marketing a new product which solves the portability problem commonly associated with three-checks-to-a-page desk-style checkbooks. Harland inserted a small, carry-around stub between the check and the checkbook's permanent stub. This intermediate stub has lines for recording the date, the amount of the check, the payee, and the purpose of the check, the same information which normally would be placed on a permanent stub. The addition of this intermediate stub makes it more convenient to use checks from the desk-style checkbook at various locations. A person can remove the checks and the corresponding carry-around stubs from the checkbook, 1 placing them in a carrying case which comes with the checkbook; then, when each check is written, the check writer can record the transaction on the carry-around stub, detach the stub, place it in the carrying case, and keep the stub until there is an opportunity to enter the transaction onto the conventional check stub in the desk-style checkbook.

Page 970

Harland spent considerable time and effort marketing its new product, heralding the intermediate stub as "the most functional innovation ever offered in three-to-the-page checks." 2 Harland named the intermediate stub the Memory Stub and registered this name as a trademark with the U.S. Patent and Trademark Office on December 6, 1976. Harland also registered copyright claims with the U.S. Copyright Office and placed copyright notices on all of its intermediate stub products. 3 The new product as a whole, a three-checks-to-a-page desk-style checkbook with intermediate carry-around stubs and an accompanying carrying case with compartments for the checks and stubs, was marketed as the "Odyssey Collection" and promptly became one of Harland's most successful products.

In 1979, Clarke modified its standard three-checks-to-a-page desk-style checkbook to include an intermediate carry-around stub. There is no doubt from the record that Clarke's modification was a response to the competitive success of Harland's Odyssey Collection. Nor is there any doubt that Clarke's development process consisted largely of copying Harland's product. Clarke officials reviewed Harland's catalog and advertising materials, placed an order for some of Harland's Odyssey Collection check packages, and referred to Harland's products when designing Clarke's new desk-style format. 4 Not surprisingly, Clarke's new product was very similar to Harland's: both were three-checks-to-a-page desk-style checkbooks with intermediate carry-around stubs; the intermediate stubs were identical in size and shape; both intermediate stubs had vertical lines for recording the same information; and the products had virtually identical cases for carrying the checks and intermediate stubs. See Figures 3-6. Clarke marketed its product under the name Deskette Entry Stub and called the intermediate stub an Entry Stub. When Clarke began marketing this new product, Harland informed Clarke that it was engaging in "infringing acts" and demanded that Clarke withdraw the product from the market. Clarke refused, and this lawsuit followed.

In its complaint, Harland brought claims for trademark infringement, unfair competition (including trade dress infringement), trademark dilution, injury to business reputation, deceptive trade practices and copyright infringement, arising under the common law, the statutes of the State of Georgia, the Trademark Act of 1946 (commonly known as the Lanham Act), 15 U.S.C.A.

Page 971

§ § 1051et seq., and the Copyright Act of 1976, 17 U.S.C.A. §§ 101 et seq. The district court dismissed Harland's copyright infringement claim, but conducted a five-day jury trial on the other claims. The jury found Clarke liable for trademark infringement and trade dress infringement, 5 awarding Harland $50,000 in damages. The district court then entered judgment against Clarke on all claims except the copyright claim and, inter alia, enjoined Clarke from using "trade dress for bank check products which is confusingly similar to the trade dress or overall appearance" of Harland's Memory Stub check products.

On appeal, appellee/cross-appellant Harland contends that the district court erred when it granted summary judgment in favor of Clarke on the copyright infringement claim. Appellant/cross-appellee Clarke contends that the evidence was insufficient to support the findings of trademark infringement and trade dress infringement. Clarke also contends that the district court's injunction is overbroad and does not set forth in sufficient detail the act or acts sought to be restrained. We consider each of these contentions below.


The first issue on appeal concerns the propriety of the district court's granting of Clarke's motion for summary judgment on the copyright infringement claim. The district court held that Harland's Memory Stub product was not subject to copyright protection because it was merely a blank form which did not convey information. Thus, the district court concluded that Harland's copyright registrations only protected the artistic background designs on the Odyssey Collection checks. 6 Harland contends that this conclusion was erroneous. According to Harland, the copyright registrations not only protected the background designs on the checks, but also protected the entire "Memory Stub expression" which "consists of the specific size, shape, layout and decoration of the carry-around stub and its placement in relation to other portions of the check product." Brief of Appellee/Cross-Appellant at 36-37. 7 We agree with the district court that Harland's Memory Stub product was not copyrightable. Consequently, we affirm the district court's grant of summary judgment on this issue.

It is well-established that blank forms which do not convey information or contain original pictorial expression are not copyrightable. See, e.g., Baker v. Selden, 101 U.S. 99, 107, 25 L.Ed. 841 (1879) (holding that "blank account-books are not the subject of copyright"); M.M. Business Forms Corp. v. Uarco, Inc., 472 F.2d 1137, 1139 (6th Cir.1973) ("Generally, forms, including blank forms, which are intended to be used for recording facts are not the proper subjects of copyright."); Time-Saver Check, Inc. v. Deluxe Check Printers, Inc., 178 U.S.P.Q. (BNA) 510 (N.D.Tex.1973) (holding that blank bank checks and attached duplicate forms to be used with carbon paper for record purposes are not copyrightable). This rule is embodied in regulations on the scope of copyright protection promulgated by the Copyright Office, which state in relevant part:

The following are examples of works not subject to copyright and applications for

Page 972

registration of such works cannot be entertained:

* * *

(c) Blank forms, such as time cards, graph paper, account books, diaries, bank checks, score cards, address books, report forms, order forms, and the like...

To continue reading