Alfred Bell & Co. v. Catalda Fine Arts

• Decision Date: 23 September 1947
• Citation: 74 F. Supp. 973
• Parties: ALFRED BELL & CO., LIMITED, v. CATALDA FINE ARTS, Inc., et al.
• Court: U.S. District Court — Southern District of New York

74 F. Supp. 973

ALFRED BELL & CO., LIMITED, v. CATALDA FINE ARTS, Inc., et al.

District Court, S. D. New York.

September 23, 1947.

Guggenheimer & Untermyer, Eugene Untermyer, William J. Cohen and Rudolph E. Uhlman, all of New York City, for plaintiff.

Purdy & Lamb, Edmund F. Lamb and Anthony B. Cataldo, all of New York City, for Catalda.

Ehrich, Royall, Wheeler & Holland and James G. Holland, all of New York City, for U. S. Printing & Lithograph.

SMITH, District Judge.

The plaintiff, a British print producer and dealer, member of the Fine Arts Trade Guild, copyrighted in the United States eight mezzotint engravings of old masters produced at its order by three mezzotint engravers.

The defendants, a color lithographer, a dealer in lithographs and the dealer's president, produced and sold color lithographs of the eight mezzotints.

The first question in the case is whether these mezzotint engravings are copyrightable under the constitutional provision¹ giving the Congress the power to legislate copyright monopolies and under the legislation² passed pursuant to the grant of power to the Congress. Concededly the subjects of the eight engravings are paintings by other persons than the mezzotint engravers, all of them being well-known paintings executed in the late eighteenth or early nineteenth centuries and all now in the public domain. The mezzotint method lends itself to a fairly realistic reproduction of oil paintings. It is a tedious process requiring skill and patience and is, therefore, rather expensive compared with modern color photographic processes.

The artists employed to produce these mezzotint engravings in suit attempted faithfully to reproduce paintings in the mezzotint medium so that the basic idea, arrangement, and color scheme of each painting are those of the original artist. The mezzotint engraving process is performed by first rocking a copper plate, that is, drawing across the plate under pressure a hand tool having many fine and closely spaced teeth. The tool is drawn across the plate many times in various directions so that the plate is roughened by the process. The outlines of the engraving are then placed upon the plate either by tracing with carbon paper from a photograph of the original work which it is desired to reproduce in this medium or by a tracing taken from such a photograph on gelatine sheets transferred to the copper plate by rubbing carbon black or some similar substance in the lines of the tracing on the gelatine sheet and transferring of them by pressing the sheet upon the copper plate. With the image on the roughened plate the engraver then scrapes with a hand tool the picture upon the plate, obtaining light and shade effects by the depth of the scraping of the roughened plate or ground. When the plate is completed, trial prints are taken from it and it may be altered to make the final result to the satisfaction of the engraver. When it is completed and a satisfactory proof drawn from the plate, a thin steel coating is applied to it to preserve it during the printing of the final article, of which several hundred may be drawn from such a steel-faced plate before noticeable wearing of the plate. The final product is a print in color called in the trade a proof. The color is applied to the plate by hand before each print or proof is drawn from the plate. The color may be applied to the plate by the artist, but usually is done by one or more printers who follow a sample print or color guide in applying the colored ink in the depressions made by the engraver on the plate. It is possible by this process to make quite a satisfactory reproduction of the original painting in whatever size desired (the size of the photograph governing the size of the engraving), preserving the softness of line which is characteristic of the oil painting. It is not, however, possible to make a photographic copy of the painting by this method exact in all its details. The work of the engraver upon the plate requires the individual conception, judgment and execution by the engraver on the depth and shape of the depressions in the plate to be made by the scraping process in order to produce in this other medium the engraver's concept of the effect of the oil painting. No two engravers can produce identical interpretations of the same oil painting. This would appear to be sufficient to meet the requirement of some originality³ to entitle a work to the protection of the copyright law.

Congress in the Act, and the copyright office in the regulations adopted pursuant to the Act, recognize that there may be if reproductions of works of art an artistic element distinct from that of the original work of art.

Such an element satisfies the purpose of the constitutional provision.

The question arises whether the "interpretation" of the original obtained by the mezzotinter in his management of the depth and form of the depressions on his plate is such an element. Examination of the three "Blue Boy's" and the two "Chateau Renaud's" reveals a distinctive difference, most noticeable in the facial expressions. True, all three "Blue Boy's" are Gainsborough's in origin, as both "Chateau Renaud's" are Nattier's, and small photographs of the mezzotints reproduced in half-tone are so difficult to tell apart that a photo of one is sometimes used to advertize another. Examination of the half-tones 1982 and 2260 in Exhibit D makes it plain that both are of "Chateau Renaud" by Wardle, Exhibit E, although 2260 purports to be of Exhibit 4a by Woollard. There are marked differences in the large flower at the edge of the bodice, the bun of hair at the nape of the neck, and in the facial expressions, between the two mezzotints. In each of these respects the half-tones both follow Exhibit E rather than 4a. It appears likely that the similarities in the half-tones of "Lady Rushout and Daughter", and in the half-tones of "La Lecon de Musique" are ascribable to a similar situation in spite of Bell's recollection that he had used half-tones of the new mezzotints in advertising them. Where we have the mezzotints themselves in evidence, the difference in handling by two engravers is noticeable.

Of course, the ideas for the subject are entirely those of the first artist, the painter. What is original with the engraver is the hardling of the painting in another medium to bring out the engraver's conception of the total effect of the old master. The engraver is not trying to alter or improve on the old master. He is trying to express in another medium what the original artist expressed in oils on canvas.

It is only this treatment in another medium which is original, but it is a distinguishable effect which can itself be copied by photography. The engraver's contribution to the world's art is indeed modest, but it is his own and should be protected.

It is impossible to draw two identical proofs from the same plate since each proof is the result of a separate inking, by hand, of the plate, and the colors vary in some slight degree in each proof. They all, however, carry the same interpretation of the original, the result of the engraver's conception of the necessary shape and depth of the depressions on the plate, and may well be considered the same work rather than individual works which must each be copyrighted.

The plaintiff printed small half-tone reproductions of the mezzotint engravings in its catalogue without carrying upon these half-tones any notice of copyright. Similar half-tones were also carried in catalogues of the Fine Arts Guild. It is contended that both of these are publications without notice of copyright resulting in an abandonment of copyright. It is true that both were circulated rather widely. It is obvious, however, that it was done for advertising purposes and no other purpose. It did not mislead the defendants. It was done to acquaint the print-buying public with the availability of the mezzotint engravings for purchase and was not intended to, nor should it, result in an abandonment of copyright protection of the engravings.⁴

Mezzotints in other sizes and by other mezzotint engravers, as well as in one case a stipple engraving of one of the old masters, subjects of the engravings in suit, had been produced for, and sold by, the plaintiff prior to the production, copyright, and sale of the mezzotint engravings in suit. In view of the nature of the process, however, involving, as we have found, necessarily originality on the part of the engraver, each is a proper subject of copyright, and the publication of one does not prevent a later copyright and publication of another by the same copyright owner. It would be otherwise were the second copyright that of a second edition drawn from the same plates, for a copyright owner could not so extend the term of his copyright.⁵

Concededly the defendants used proofs taken from the plaintiff's plates and sold by the plaintiff, carrying notice of plaintiff's copyright, as the subjects of their colored photoengravings. These proofs were set up and photographed with continuous tone negatives through color filters extracting different color values on the negatives. Each of these values was transferred from the negatives through a half-tone screen to a highly-sensitized aluminum plate coated with a protective substance. The plate was then etched with acid and finally corrected by hand to give the desired half-tone result. The image on each flat original plate was then transferred mechanically to a curved printing plate. A total of nine or ten different plates was used for each lithograph, one color being printed by each printing plate, the image being transferred to a rubber blanket and thence to the paper in an offset printing-press. This is a method which might permit copyright if done of some subject in the public domain, but it was here used to copy a copyrighted subject, taking from the plaintiff the fruits of the originality of its engravers. Of course, ...