B & B Auto Supply, Inc. v. Plesser

• Decision Date: 23 February 1962
• Citation: 205 F. Supp. 36
• Parties: B & B AUTO SUPPLY, INC., an Illinois corporation, Plaintiff, v. James PLESSER, doing business under the name and style of Anvil Products Div., Export Division of Hamos Company, Defendant.
• Court: U.S. District Court — Southern District of New York

205 F. Supp. 36

B & B AUTO SUPPLY, INC., an Illinois corporation, Plaintiff, v. James PLESSER, doing business under the name and style of Anvil Products Div., Export Division of Hamos Company, Defendant.

United States District Court S. D. New York.

February 23, 1962.

Allesio & Kirby, New Hyde Park, Long Island, for plaintiff (John Brezina, Chicago, Ill., of counsel).

Kupferman & Price, New York City, for defendant (Theodore R. Kupferman, New York City, of counsel).

COOPER, District Judge.

This is an action for infringement of the copyright on a trade catalog brought under the provisions of Title 17 U.S.C.A., in which plaintiff seeks the customary relief of damages, an injunction, and an accounting of profits. In addition, the complaint contains a claim based upon alleged unfair competition by defendant.

The case was tried before the court without a jury. Plaintiff, B & B Auto Supply, Inc. (hereinafter referred to as B & B), is a corporation organized under the laws of the State of Illinois, with its principal place of business in the City of Chicago. The defendant, James Plesser, is an individual doing business under the name and style of "Anvil Products Div., Export Division of Hamos Company," with its principal place of business in New York City.

B & B is primarily a wholesaler of automotive parts and accessories; and as such it maintains a full inventory of the automotive merchandise which it offers for sale.

In order to promote the sale of its extensive line of automotive supplies, B & B regularly publishes a detailed catalog which it furnishes gratuitously to customers and prospective purchasers in order to advise them of the particulars of the various items which it keeps in stock. An issue of this catalog usually becomes obsolete after six months and is then replaced by a revised up-to-date edition.

From the evidence adduced at the trial, it is manifest that the catalog is of major importance to the conduct of plaintiff's business. In essence, the role of the catalog is to act as the "silent salesman" for the various items marketed by B & B, so that its main function is to present these items to prospective purchasers in a graphic and informative fashion and in so doing to induce or invite orders. For this purpose, the catalog also is mailed to potential customers in various foreign countries; and it plays a vital part in plaintiff's sales in the foreign market.

Plaintiff, in its complaint, alleges that defendant Plesser has infringed its copyright on B & B's Catalog No. 142, dated January, 1957. This is a 48-page trade catalog which contains descriptive material relating to automotive parts and accessories offered for sale by B & B and which bears on its second page the notice, "Copyright 1957 B&B Auto Supply Inc."

The evidence in the case distinctly discloses that plaintiff's catalog possesses such degree of originality as is required to entitle plaintiff to copyright protection. Thus, it appears that plaintiff expended substantial efforts in the gathering, assembling and synthesizing of data relating to the particular automotive items which it selected for marketing. Plaintiff would then condense such data and create for its catalog original descriptions, in text and pictures, of the specific features of the supplies which it stocked and sold. In part, this entailed the preparation of wood engravings that would accurately and graphically reveal the precise details of these items in an effective form suitable for catalog use.

The creative effort required for the preparation of these catalogs was revealed in part by B & B's president and principal stockholder, who testified that in his capacity as a corporate officer he devoted at least sixty percent of his time to the research and editorial work essential to producing the semi-annual issues of the catalog. Each issue describes a variety of different kinds of automotive parts and equipment.

As a result of model changes and the vagaries of consumer demand, new automotive parts and accessories appear on the market each year while other items become obsolete. For this reason, although much of the material in the B & B catalog is repeated from earlier catalogs, a new issue of B & B's catalog characteristically contains numerous changes in regard to the types of items listed, as well as changes in specifications, prices and other matters.

Comparison with plaintiff's prior catalogs discloses that B & B's Catalog No. 142 contains a large number of changes in data, specifications, text and prices, and, also, twenty-nine new and original wood engravings picturing diverse automotive items. It appears, according to the testimony, that the cost of the new engravings alone amounted to $377; in addition, however, there was testimony that if all the original engravings and text descriptions were taken into consideration, the total expense to B & B in publishing this catalog exceeded $25,000.

Shortly after its publication of Catalog No. 142, plaintiff duly secured from the Register of Copyrights a certificate of registration, dated October 1, 1957, covering the catalog. That certificate declared February 13, 1957 as the date of first publication of Catalog No. 142.

Defendant Plesser's catalog, from which this action stems, was published in April 1957 under the name and style of "Anvil Products Div." It, too, consists of exactly forty-eight pages, but the first and last four pages are printed on yellow paper, with the balance printed on white paper.

In both content and appearance, the front page of defendant's catalog does differ substantially from the cover page of B & B's catalog. However, that is where the difference ends. The remaining forty-seven pages of defendant's catalog constitute an almost exact facsimile of the corresponding pages in B & B's Catalog No. 142.

Defendant Plesser is in the general export business and sells any product "from soup to nuts, practically," including automotive parts and accessories. As he maintains no inventory or stock, defendant ordinarily buys merchandise only for the purpose of filling a specific order which he has received from some overseas customer. Defendant's basic mode of operation simply consists of taking orders for any items which a foreign customer has selected from a catalog or learned about through other means. Plesser then attempts to acquire such merchandise; and if successful, he exports those items to the persons overseas who have ordered them.

In April, 1957, defendant Plesser arranged for the printing of the "Anvil Products Div." catalog by means of what is known as the "photo-offset" printing process. Essentially, this involved a photographic reproduction of previously printed material. For pages two through forty-eight of the "Anvil" catalog, Plesser simply "lifted" the corresponding pages of B & B's Catalog No. 142, making only slight and minor alterations of an inconsequential nature.

Thus, defendant's catalog, except for its front page, was prepared by pasting the text and illustrations from B & B's Catalog No. 142 onto layout sheets, which were then reproduced, through the photo-offset method, by defendant's printer. This procedure relieved defendant of the necessity of any work of his own, creative or otherwise, so far as the "Anvil" catalog was concerned.

Some sixteen thousand copies of defendant's "Anvil" catalog were printed, at a cost of approximately $1,900. Manifestly, defendant Plesser's method of producing his catalog was far less expensive than the method required by B & B to produce its Catalog No. 142. Plesser distributed between 8,000 and 12,000 copies of the "Anvil" catalog, and illustrations from this catalog were subsequently used by him to describe and acquire from suppliers the items needed to fill specific orders.

On September 27, 1957, defendant received written notice of infringement of copyright from plaintiff's attorneys.

I

The record patently demonstrates that in preparing his "Anvil" catalog, defendant Plesser arranged for the copying of most of B & B's Catalog No. 142 practically in toto. By way of defense to plaintiff's claim of infringement, however, defendant alleges that B & B's catalog is in the "public domain" and hence not within the protection of the copyright laws.

The court finds that defendant has in no sense sustained his burden of proving the alleged invalidity of plaintiff's copyright. See Modern Aids, Inc. v. R. H. Macy & Co., 264 F.2d 93, 94 (2nd Cir., 1959).

Defendant argues that B & B's catalog fell into the "public domain" for the reason that it also was published by Denmay Merchandising Company, a trade name or style which B & B used, and by Major Products, Inc., a corporation owned and controlled by the same persons who owned and managed B & B.

At no time did B & B assign its copyright to these (or any other) companies. However, defendant urges that since the required notices of copyright appearing in those catalogs named the Denmay and Major companies, respectively, as copyright proprietors, it follows that the work entered the "public domain" and that B & B thereby forfeited its copyright in Catalog No. 142. After due and full consideration, the court finds that this argument must be rejected.

The evidence adduced at the trial plainly shows that defendant Plesser actually produced his "Anvil" catalog by deliberately and unabashedly copying forty-seven pages of material from B & B's Catalog No. 142, which in fact contained the notice, "Copyright 1957, B & B Auto Supply, Inc." 17 U.S.C.A. § 19.

As has been aptly observed, the underlying purpose of the notice requirement is to prevent innocent persons who are unaware of the existence of the copyright from incurring penalties for making use of the copyright work. See, e. g., National Comics Publications, Inc. v. Fawcett Publications, Inc. et al., 191 F.2d 594, 602 (2nd Cir., 1951).

In the present case, it is apparent that defendant Plesser was in no way prejudiced as a...