Aldon Accessories Ltd. v. Spiegel, Inc.

• Decision Date: 22 June 1984
• Docket Number: No. 1184,D,1184
• Citation: 738 F.2d 548
• Parties: , 1984 Copr.L.Dec. P 25,678 ALDON ACCESSORIES LTD., Plaintiff-Appellee, v. SPIEGEL, INC., Defendant-Appellant. ockets 83-9075, 84-7057.
• Court: U.S. Court of Appeals — Second Circuit

Page 548

738 F.2d 548

222 U.S.P.Q. 951, 1984 Copr.L.Dec. P 25,678

ALDON ACCESSORIES LTD., Plaintiff-Appellee, v. SPIEGEL, INC., Defendant-Appellant.

No. 1184, Dockets 83-9075, 84-7057.

United States Court of Appeals, Second Circuit.

Argued May 31, 1984.

Decided June 22, 1984.

James T. FitzGibbon, Chicago, Ill. (James T. FitzGibbon, P.C., Angelo J. Bufalino, Chicago, Ill., Wilson, Elser, Edelman & Dicker, New York City, of counsel), for defendant-appellant.

George Pollack, New York City, for plaintiff-appellee.

Before FEINBERG, Chief Judge, and KAUFMAN and PIERCE, Circuit Judges.

FEINBERG, Chief Judge:

Defendant Spiegel, Inc. appeals from a judgment entered in the United States District Court for the Southern District of New York, Pierre N. Leval, J., in favor of plaintiff Aldon Accessories Ltd. for $104,400 and interest at 9.93% for copyright infringement, in violation of 17 U.S.C. Sec. 504. Judge Leval denied a motion by Spiegel for a new trial on condition that Aldon agree to remit $20,000 from the jury verdict of $124,400. Spiegel raises numerous arguments before us, all of which are without merit. We find only two that warrant discussion. These concern the scope of the "work made for hire" doctrine under the 1976 Copyright Act and the propriety of the jury instructions on access and similarity.

For reasons given below, we affirm the judgment of the district court.

I.

This case arises out of Spiegel's sale, through its widely circulated catalogs, of brass unicorn statuettes that the jury found infringed a valid copyright held by Aldon. There was evidence introduced at the trial from which the jury could, and apparently did, find the following: Aldon is primarily in the business of designing and marketing figurines and other decorative pieces for the home. Most of these are copyrighted by Aldon and represented as exclusively its own. Nationwide sales are made wholesale through catalogs, a showroom in New York City, sales representatives and exhibit booths at trade shows throughout the country. Aldon does not deal directly with consumers.

Aldon has two principals, Arthur Ginsberg, who handles the creative and production side of the business, and his brother, Irwin Ginsberg, who handles sales. Some time in 1977, Arthur Ginsberg ("Ginsberg") conceived of a novel line of statuettes depicting mythological creatures, including a unicorn and a Pegasus. In September 1977, Ginsberg wrote a Japanese trading firm, Wado International Corporation, concerning the design and production of the unicorn and Pegasus, ultimately to be done in porcelain. The letter stated in part:

We just got an idea to do several Mythological animal[s], one called UNICORN & the other PEGASUS. Please examine the two clippings attached. Note that they both are similar to horses, especially the Pegasus (with eagle-like wings). While the Unicorn has a little beard and split hooves, it still resembles a horse and we do not want to have the beard and the hooves must be like a regular horse.

You remember last year with Okumura that I was trying to design horses but that they were too expensive because they were on their rear legs and had no center support? I'm sure you still have the sketches. Well, we want this pose for both the Unicorn and Pegasus. That is, both should be rearing up on their back legs with the front legs posed as if "kicking out" ... a feeling of motion or action. The tails should be very full (like on the Unicorn clipping) and touching the base to give additional support. Please make the base as thin & small as possible but make sure the piece stands securely and won't easily fall over.

Shortly thereafter, Ginsberg also sent Wado a very rough sketch of the pose he had in mind for the unicorn and the Pegasus, apparently to remind Wado of the sketches and discussions mentioned in his earlier letter.

In late October or early November, Ginsberg traveled to Japan to work with artists hired by Wado in developing models of the statuettes he had in mind. In describing his participation, Ginsberg testified as follows:

An artist that had worked with me and I sat down together, and we took some of the sketches that we had made on my previous visit ... and we tried to go over those sketches that we both had done together, to come up with a shape or form that would satisfy me for its acceptability. And finally the artist and I agreed on a certain kind of pose, certain proportions for the horse, the musculature the way the mane was supposed to be done, the sense of its movement, the way it would be produced ... [a]nd setting up sketches at that first instance, that would at once be aesthetically pleasing to me and that would have marketability and at the same time as a practical matter could be made economically.

* * *

After the sketches were agreed upon we had a model maker who makes models in clay, and interpreting from a two-dimensional sketch to a three-dimensional model takes a lot of work until it is satisfactory. And the model was prepared in front of me, and we spent hours and hours changing shapes, adjusting attitudes and proportions until finally I thought there was a model that I liked.

The process took three days, producing at the end a clay model that was substantially identical to the porcelain unicorn ultimately marketed by Aldon. Ginsberg testified at length as to the precise nature of his interaction with the artists. The gist of his testimony was that while he is not an artist and did not do the sketching or sculpting, he actively supervised and directed the work step by step. For example, Ginsberg testified, "The artist will do it this way, and I will say 'No, put the leg this way, make this proportion, put the head this way, make the hair that way.' "

Aldon first received selling samples of the porcelain unicorn in early 1979 and began advertising by brochures and a general mailing. In July 1980, Ginsberg filed a certificate of copyright registration for the porcelain unicorn in which he identified Aldon as the author and indicated that authorship of the statuette was based on its being a "work made for hire."

Meanwhile, in August 1979, Ginsberg wrote to the Unibright Company in Taiwan to initiate the development of solid brass versions of Aldon's exclusive porcelain unicorn and Pegasus statuettes. Ginsberg expressed interest in producing three sizes: approximately five, seven and ten inches high. He included a color photograph of the porcelain statuettes and sent samples of them separately. In October 1979, Ginsberg visited the Unibright firm during a four-week trip to Taiwan. He testified to working with the Unibright employees in essentially the same manner as he had worked with the Wado artists in developing the porcelain statuettes. Several changes were made from the porcelain design at Ginsberg's direction. Before he left Taiwan, he had final brass models for each of the three sizes he wanted, different in base, tail and head from the porcelain version and each of the sizes slightly different from the others. In July 1980, Ginsberg filed a certificate of copyright registration for the three brass unicorns as works derived from the earlier porcelain unicorn. He listed Aldon as the author and indicated "work made for hire."

Aldon had received the first production samples of the brass unicorns in January 1980. The whole series of brass and porcelain unicorn and Pegasus statuettes was included in Aldon's 1980 and 1981 catalogs and was advertised by a photograph in the January 1981 issue of Gifts & Decorative Accessories magazine, a trade publication. The series was also displayed by Aldon at the Chicago Gift Show in late January 1981. Irwin Ginsberg testified that one of Spiegel's buyers, Jan Vercillo, spent about a half hour at Aldon's booth during this show and examined the entire unicorn collection. Prices were pasted on the bottom of each item, right next to Aldon's copyright notice. Vecillo requested that samples be sent to her, took an Aldon catalog and said she would get in touch with Irwin Ginsberg as soon as she received the samples. The requested samples were sent, but repeated efforts by him to contact Vercillo over the next six to eight weeks were unavailing; Vercillo did not return any of his calls.

Arthur Ginsberg further testified that he first became aware in the middle of 1981 that Spiegel was selling through its catalogs brass unicorns identical to Aldon's unicorns. Attempts to get Spiegel to cease its sales of the brass unicorns were unsuccessful, and this litigation ensued. At trial, the thrust of Spiegel's defense was that the copyright was invalid and that Spiegel had ordered its unicorns from Taiwan before it had access to Aldon's literature and statuettes. Spiegel's buyer, Ms. Vercillo, testified and disputed key aspects of the Ginsbergs' testimony. For example, she claimed her visit to the Aldon booth took place at a show in July and not in January, after Spiegel's catalog containing the brass statuettes had "closed" or gone into production. Such questions of fact, of course, were for the jury, which apparently decided them in favor of Aldon. For the purposes of this appeal, we do not need to describe any more of the proof offered by both Aldon and Spiegel.

II.

Spiegel argues that the trial judge gave an erroneous charge on the "work made for hire" provision of the 1976 Copyright Act, 17 U.S.C. Sec. 101. ¹ Specifically, Spiegel objects to the following instruction:

A work for hire is a work prepared by what the law calls an employee working within the scope of his employment. What that means is, a person acting under the direction and supervision of the hiring author, at the hiring author's instance and expense. It does not matter whether the for-hire creator is an employee in the sense of having a regular job with the hiring author. What matters is whether the hiring author caused the work to be made and exercised the right to direct and supervise the creation.

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