Ansehl v. Puritan Pharmaceutical Co.

• Citation: 61 F.2d 131
• Decision Date: 18 October 1932
• Docket Number: No. 9403.,9403.
• Parties: ANSEHL v. PURITAN PHARMACEUTICAL CO. et al.
• Court: U.S. Court of Appeals — Eighth Circuit

61 F.2d 131 (1932)

ANSEHL v. PURITAN PHARMACEUTICAL CO. et al.

No. 9403.

Circuit Court of Appeals, Eighth Circuit.

September 7, 1932.

Rehearing Denied, October 18, 1932.

Ralph Kalish, of St. Louis, Mo., for appellant.

Robert C. Powell, Howard G. Cook, and Gus O. Nations, all of St. Louis, Mo., for appellees.

Before GARDNER, SANBORN, and BOOTH, Circuit Judges.

SANBORN, Circuit Judge.

The appellant was plaintiff in the court below, and the appellees were defendants, and they will be so referred to in this opinion. The plaintiff brought suit against the defendants, alleging the infringement of a copyright covering advertising matter, and asking for an injunction and an accounting. The complaint alleged that the plaintiff was a dealer in cosmetic and toilet articles bearing the trade-name "Vivani"; that, to promote the sale of these articles, he prepared a distinctive advertisement composed of a photograph and of reading and descriptive matter, which advertisement was published in various newspapers of general circulation in several cities of the United States; that as author he made his publications with notice of copyright, and took the necessary steps for securing, and did secure, a certificate of copyright registration; that the defendant Beecher-Cale-Maxwell, Inc., was a general advertising agency, and that the defendant Puritan Pharmaceutical Company was engaged in selling toilet articles similar to those marketed by the plaintiff; that the defendants were fully aware of the plaintiff's copyrighted advertisement, but published a similar advertisement of their products under the name of "Milaire Company," which advertisement they copied from the plaintiff's copyrighted advertisement; that the plaintiff notified the defendants to desist from so doing, but without effect. Attached to the complaint is the plaintiff's copyrighted advertisement and also the accused advertisement of the defendants.

Briefly and generally, the plaintiff's composition is about the size of the usual newspaper page. Slightly above the center is a photographic print, which occupies about a third of the space used. This print depicts, against a dark background, eight toilet preparations in their containers, with the name "Vivani" upon them. The arrangement of these articles in the picture is somewhat symmetrical and attractive. The advertisement has the caption, "The Greatest Souvenir Ever Offered (This Advertisement Will Not Appear Again!)" In the upper right-hand corner appears in large figures "99 ¢," decorative in design. Below these figures, and running downward along the right side of the advertisement, is a large arrow pointing to a "certificate" of the coupon type, which is intended for use in ordering and remitting for the articles advertised. Below the photographic print are eight small paragraphs, each descriptive of one of the articles portrayed, and each stating that the article described is included in the souvenir set. Below these appear a list of dealers selling the Vivani souvenir sets, a statement of the suggested retail price of each item, and an assertion that, while three years before three million of these sets had been issued, only one million would be available "this year." The advertisement constitutes an offer to sell for 99 cents a set of the articles portrayed, and the picture and the language used in connection therewith are intended to make this offer an attractive one to the reader of the advertisement.

The accused advertisement is approximately the same size. It includes a photographic print of toilet articles, ten in number, similar to those advertised by the plaintiff, but under the name "Milaire," depicted against a black background, and arranged in much the same fashion as those shown in the plaintiff's advertisement. The defendants' advertisement is headed, "An Extraordinary Offer that May Never be Repeated." Directly below the photograph is reading matter stating that millions of these sets had already been distributed, but that not more than one million were to be given out "this year." There is also a list of the retail prices of the respective products, and below are ten small paragraphs each descriptive of an article portrayed, and each concluding with the statement that that article is included in the "Make-up Package." To the right of the advertisement appears "99 ¢" in large, decorative figures about half the size of the same figures in the plaintiff's composition. In the lower right-hand corner is the usual coupon, in form similar to that of the plaintiff's coupon. The defendants' advertisement constitutes an offer to sell the articles portrayed for 99 cents, and the picture and the language used in connection with this offer were intended, as in the case of the plaintiff's advertisement, to make the offer similarly attractive to one reading the advertisement.

The defendants filed no answer to the plaintiff's complaint, but moved to dismiss, under Equity Rule 29 (28 USCA § 723), for want of equity appearing upon the face of the complaint; and this motion was granted. From the decree of dismissal, the plaintiff has appealed.

Since such a motion to dismiss has taken the place of a demurrer, it is elementary that it admits all material facts well pleaded in the complaint, that only defenses in point of law appearing upon the face of the complaint may be considered, and that, unless it is clear that, taking the allegations to be true, no cause of action in equity is stated, the motion should be denied. Stromberg Motor Devices Co. v. Holley Bros. Co., 260 F. 220, 221 (D. C., E. D. Mich.); Edwards v. Bodkin, 249 F. 562, 564 (C. C. A. 9th); Krouse v. Brevard Tannin Co., 249 F. 538, 548 (C. C. A. 4th); Tompkins v. International Paper Co., 183 F. 773, 774 (C. C. A. 2nd); Vitagraph, Inc., v. Grobaski, 46 F.(2d) 813, 814 (D. C., W. D. Mich.); Ralston Steel Car Co. v. National Dump Car Co., 222 F. 590 (D. C., D. Me.).

There is nothing in the record which indicates the ground upon which the court below granted the motion to dismiss.

No claim is made by the defendants that the plaintiff's composition was not the subject of copyright, but that question is necessarily in the case.

Prior to the decision of the Supreme Court of the United States in the case of Bleistein v. Donaldson Lithographing Co., 188 U. S. 239, 23 S. Ct. 298, 47 L. Ed. 460 (1903), it was the tendency of the courts to hold that advertising matter of this type could not be the subject of a copyright. This is illustrated by the following quotations:

"The article must have by itself some value as a composition, at least to the extent of serving some purpose other than as a mere advertisement or designation of the subject to which it is attached." Mr. Justice Field in Higgins v. Keuffel, 140 U. S. 428, 431, 11 S. Ct. 731, 732, 35 L. Ed. 470 (1891).

"They illustrations of plumbing ware offered for sale are mere advertisements of the appellant's wares, with nice cuts or illustrations of the goods accompanying and forming part of the advertisement, as an allurement to customers. The question, therefore, which confronts us, is, were such things intended to be protected by the constitutional provision in question? The object of that provision was to promote the dissemination of learning, by inducing intellectual labor in works which would promote the general knowledge in science and useful arts. It is not designed as a protection to traders in the particular manner in which they might shout their wares. It sought to stimulate original investigation, whether in literature, science, or art, for the betterment of the people, that they might be instructed and improved with respect to those subjects. Undoubtedly a large discretion is lodged in the congress with respect to the subjects which could properly be included within the constitutional provision; but that discretion is not unlimited. It is bounded and circumscribed by the lines of the general object sought to be accomplished. * * * So far as the decisions of the supreme court have gone, we think they hold to the proposition that mere advertisements, whether by letterpress or by picture, are not within the protection of the copyright law." Mott Iron Works v. Clow, 82 F. 316, 318, 321 (C. C. A. 7th, 1897).

"It is an advertisement, and nothing more. Aside from its function as an advertisement of the Morris paints, it has no value. In my opinion, it is neither chart, engraving, nor book, and could not be the subject of a copyright under the provisions of the act of 1831." Ehret v. Pierce, 10 F. 553, 554 (C. C., E. D. N. Y., 1880).

"But it is urged that it is alleged and claimed by the complainants that their illustrations are intrinsically valuable, as works of art. I am convinced, however, that they were not published as such, but simply for trade purposes in aid of their sales, and I doubt (though I do not decide) whether they can be regarded in any other light. If they could be established to be works of art, having value independent of their use as advertisements, a very different question would be presented. This subject may be deferred until the hearing of the cause. I have too much doubt about the fact to warrant the granting a preliminary injunction, and the motion therefore is denied." Lamb v. Grand Rapids School Furniture Co., 39 F. 474, 475 (C. C., W. D. Mich., 1889).

"If it were done * * * solely for the purpose of advertising particular articles for sale * * * I know of no law which would prevent him (a second advertiser) from using the same advertisement, provided he did not in such advertisement by any device suggest that he was selling the works and designs of the first advertiser. * * * But at the last it always comes round to this, that in fact there is no copyright in an advertisement. If you copy the advertisement of another, you do him no wrong, unless in so doing you lead the public to believe that you sell the articles of the person whose advertisement...