L & L White Metal Casting Corp. v. Joseph, 71-C-1668.
| Decision Date | 15 January 1975 |
| Docket Number | No. 71-C-1668.,71-C-1668. |
| Citation | 387 F. Supp. 1349 |
| Parties | L & L WHITE METAL CASTING CORP., Plaintiff, v. Max JOSEPH, Individually and d.b.a. L & M Products Co., et al., Defendants. |
| Court | U.S. District Court — Eastern District of New York |
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Sparrow & Sparrow, Mark H. Sparrow, New York City, for plaintiff; Jacobs & Jacobs, P. C., New York City, of counsel.
Darby & Darby, New York City, for defendants Max Marcus, Aetna Casting Corp., M. MacKeller and King Kasters, Inc.; Michael J. Sweedler, New York City, of counsel.
Upham, Meeker & Weithorn, New York City, for defendants Ross Strober and Camelot Lighting Co., Inc.; Howard J. Zuckerman, New York City, of counsel.
Lifshutz & Kahn, New York City, for defendant Burt Tudor.
In this non-jury action plaintiff claims that eleven of the defendants' metal castings and twenty-four photographs of the plaintiff's products appearing in the defendants' trade catalog infringe plaintiff's copyrights in violation of Title 17 of the United States Code. In addition, the plaintiff charges unfair competition by reason of the defendants' use of the same photographs of the plaintiff's products in violation of 15 U.S.C. § 1125. Jurisdiction is based on 28 U.S.C. § 1338. Most of the facts are admitted and may be stated briefly as follows.
Plaintiff, L & L White Metal Casting Corp., is a New Jersey corporation engaged in the design, manufacturing, and sale of metal castings used as components in the manufacturing of lamp and lighting fixtures. Defendant Max Marcus is a resident of New York and is president, director, and half owner of the defendant Aetna Casting Corp., which is a New York corporation engaged in the manufacturing and sale of its own metal castings for lamp and lighting fixtures as well as the resale of castings manufactured by others.
Defendants admit that the copyrights covering all of plaintiff's castings involved in this action are valid and that eight of the defendants' castings infringe said copyrights, but deny infringement as to the remaining three defendants' castings. Each of these three castings are produced from molds, purchased from a third party, which originally produced castings identical to those covered by the plaintiff's copyrights. In an attempt to avoid infringement, the defendants altered each mold with the result that certain elements of design in the original molds were either eliminated or changed and new elements of design were added.
As to the twenty-four photographs contained in the defendants' trade catalog, the defendants deny the validity of the copyrights but admit infringement if valid. When the plaintiff decided to publish photographs of its castings sometime between 1935 and 1965, it published photographs of all castings manufactured by the plaintiff to that date but this original catalog was never copyrighted. Approximately every year thereafter plaintiff published a catalog supplement containing photographs of new castings offered for sale by the plaintiff. Since 1965 the plaintiff has obtained copyrights on the annual supplements and at the trial it produced certificates of copyright registration issued by the United States Patent Office covering the three supplements for the years 1965, 1967, and 1968. All of the supplements are consecutively paginated so that they may be inserted at the back of the original catalog, which is structured as a loose-leaf booklet. Upon publication, each supplement is mailed to each of the plaintiff's existing customers with instructions to insert it at the back of the main catalog.
When the plaintiff receives a new customer a complete catalog, including all up-to-date supplements, is sent to the customer. The first page of each of the above-mentioned copyrighted catalog supplements displays a notice of copyright in the following form: "Copyright © L & L WMC (date)." In the 1965 supplement the exact same notice appears on every page except the last. No supplement was published in 1966 but in the 1967 supplement the same notice appears on every page except for the fact that the date has been omitted on all pages except the first. In the 1968 supplement the same notice appears on every page except that the date varies from page to page. There is no notice of copyright anywhere else in the catalog and when the supplements are inserted into the original catalog, the first appearance of any notice is on page 109, which is the first page of the 1965 supplement. Defendants used twenty-four of the photographs contained in the plaintiff's entire catalog but only seven of them appeared in the copyrighted supplements.
The castings in this case, it will be recalled, are castings of lamp bases or other components used in the designing of lamps. Since the defendants admit that eight of their castings infringe the plaintiff's copyrights, the only issue as to the infringement of the plaintiff's copyrights on its castings is whether the defendants' three castings numbered 55, 134, and 135 infringe plaintiff's castings numbered 8662, 8881, and 8884, respectively.
A copyright infringement depends not upon identity but upon whether a substantial similarity exists between the copyrighted work and the alleged copy. It is an "ad hoc" determination and rests upon the facts of each individual case. To make such a determination the Court must decide "whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Ideal Toy Corp. v. Fab-Lu Ltd. (Inc.), 360 F.2d 1021, 1022 (2d Cir. 1966). See also Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., Inc., 509 F.2d 64, 2d Cir., 1974; Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092 (2d Cir. 1974); Concord Fabrics, Inc. v. Marcus Brothers Textile Corp., 409 F.2d 1315 (2d Cir. 1969). Obviously, such a test cannot be subjected to mathematical determination and rests, to a great extent, upon the powers of observation and common sense of the court. It is pertinent to remember that the test for copyright protection is not the same as the test for infringement avoidance. While copyright protection for originality exists if a new element is introduced which is novel or original as compared to the previously known art or material, the introduction of such a new element to the original article will not suffice for infringement protection if the ordinary lay observer would still regard the two articles as substantially similar. Puddu v. Buonamici Statuary, Inc., 450 F.2d 401 (2d Cir. 1971); Uneeda Doll Co., Inc. v. Regent Baby Products Corp., 355 F.Supp. 438 (E.D. N.Y.1972). Thus, the problem of infringement is not a simple one. While substantial similarity does not require identity or the copying of every detail, it is satisfied if the hypothetical "average lay observer" would be convinced, after a comparison of the two articles, that the accused article has been taken from the work of the copyrighted product so that the essential features of the accused article retain the overall appearance and the aesthetic appeal of the copyrighted product. Dymow v. Bolton, 11 F.2d 690, 692 (2d Cir. 1926); Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960).
Referring to the three disputed castings, we find that they were made from copies of the plaintiff's molds which were deliberately altered to change certain elements of design in order to hide the fact of copying and thereby avoid infringement. The question remains whether, after these changes, the castings produced from these molds retained a substantial similarity to the plaintiff's castings.
Defendants' casting number 55 is alleged to violate plaintiff's copyrighted casting number 8662, which consists of a small "break" piece used in the design of lamps as a crown at the top of the lamp column. In the defendants' casting the leaf design found on the plaintiff's casting was completely removed and replaced by a design consisting of a geometric pattern of circles and semicircles between two parallel horizontal bands. While the basic urn-shape was altered slightly by the partial filling in of the spaces between the fingerlike extensions at the top of the casting, the basic shape and dimensions of the plaintiff's casting remain the same. In addition, the flutes on the casting's neck have been retained by the defendants. Looking at the two, however, we believe that the changes in design were substantial enough that an average observer would not conclude that the defendants' product was copied from the plaintiff's casting.
Plaintiff's casting number 8881, the copyright of which is claimed to be infringed by the defendants' casting number 134, is a trumpet bell shaped "column" casting used as a decorative central column of a lamp. In their casting number 134 the defendants retained the trumpet bell shape and dimensions of the plaintiff's casting and the identical leaf design directly under the bobeche. In addition, the protruding scroll work along the sides of the casting which form four corners was completely retained with only simplification of design. However, the defendants completely eliminated the elaborate scroll work on the sides of the casting and replaced it with four flat parallel horizontal bands containing an "X" design in a field of star-shaped impressions. Defendants also changed the shape and design of the bobeche at the top of the casting and a new design was added where none appeared on the plaintiff's casting. Defendants have changed enough of the design on the plaintiff's casting so that the resulting product does not retain sufficient similarity to lead the average observer to conclude that the defendants' product was appropriated from the plaintiff's casting. True it is, there is similarity but there is not substantial similarity.
Plaintiff alleges that the defendants'...
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