Basevi v. Edward O'Toole Co.

• Citation: 26 F. Supp. 41
• Parties: BASEVI v. EDWARD O'TOOLE CO., Inc.
• Decision Date: 17 January 1939
• Court: U.S. District Court — Southern District of New York

26 F. Supp. 41

BASEVI v. EDWARD O'TOOLE CO., Inc.

District Court, S. D. New York.

January 6, 1939.

As Amended January 17, 1939.

Frank, Weil & Strouse, of New York City (Samuel F. Frank, of New York City, of counsel), for plaintiff.

Morgan, Finnegan & Durham, of New York City (George B. Finnegan, Jr., and Hobart N. Durham, both of New York City, of counsel), for defendant.

WOOLSEY, District Judge.

My judgment is for the defendant herein, and it may have a decree dismissing the complaint, with full costs which will include all taxable disbursements, but will not include any attorney's fee.

I. My subject matter jurisdiction is based on the Copyright Act, 17 U.S.C.A. § 1 et seq.

II. In view of the decision of the United States Supreme Court on April 25, 1938, in Interstate Circuit, Inc., et al. v. United States, 304 U.S. 55, 56, 57, 58 S.Ct. 768, 82 L.Ed. 1146, it is now a work of supererogation to write a considered opinion on the facts in an equity cause, for its place will be taken by formal findings of fact and conclusions of law, separately stated, under Rules of Civil Procedure, 28 U.S.C.A. following section 723, Rule 52 (a), formerly Equity Rule 70½, Title 28 United States Code, Section 723.

I shall, therefore, deal with the facts in this opinion only to the extent necessary to make clear my views on the questions of law involved.

III. A motion was made before Judge Bondy to dismiss the amended complaint which incorporated the three copyrighted catalogues by reference. On such a motion, of course, the relevant facts alleged in the complaint were pro hac vice admitted.

Judge Bondy denied this motion and held, 26 F.Supp. 39:

1. That plaintiff's catalogues were "books" within the meaning of the Copyright Act, that they had sufficient originality to be copyrightable as "books", that they were copyrighted as such, and, that, by necessary implication, the artistic concept of the illustrations therein, if published with proper notice, were protected as component parts of the "books".

2. That there is no "text" to the catalogues in any proper sense, and, hence, that it was not necessary, — to constitute a cause of action — to allege anything as to where any printed matter therein was printed, or as to where the illustrations were made and the catalogues were bound.

3. That infringement was sufficiently alleged by claiming exact reproductions of certain of the illustrations of paintings contained in the catalogues.

Judge Bondy's order which thus supported the amended complaint should not be disturbed by a coordinate judge, cf. Potts v. Village of Haverstraw, 2 Cir., 93 F.2d 506, 509, and his decision, therefore, fixed the law of the case for me as to the validity of the copyright and the infringement thereof, unless, on the trial, the facts shown were different from the facts alleged in the complaint and admitted by implication on the motion to dismiss. United States v. Davis, D.C., 3 F.Supp. 97, 98, 99.

I think, however, that the facts shown on the trial are in most respects materially different from the facts implicit on the motion to dismiss, and, under the proverbial principle that circumstances alter cases, I find myself, except as to his holding that the catalogues did not have to be printed and bound in the United States, freed from the authority of Judge Bondy's decision.

IV. In view of Judge Bondy's decision, however, and of the provisions of Section 15 of the Copyright Act, 17 U.S.C.A. § 15, it is now admittedly common ground — and, if it were not agreed, I should so hold on the facts now before me — that, as there was not any copyrightable printing involved in the catalogues and as the illustrations therein produced are of paintings located in a foreign country, it was not necessary to have the printing of the catalogues done in the United States as a prerequisite to securing a copyright thereof here.

V. On November 17, 1938, the defendant made a motion to amend its answer to conform to the proofs by the addition of several paragraphs thereto. This motion was not contested by the plaintiff and I ordered the amendments filed.

I am treating this amendment, — as, indeed, it was, I presume, intended to be treated—as a pleading, in part at least, of supplemental defenses to meet some situations which have arisen since this suit was commenced.

A supplementary pleading should, as here, always be filed to form the foundation —whether by way of attack or defense — for relief in respect of any matter which has arisen after suit is commenced. Cf. Hazeltine Corporation v. Radio Corporation, D.C., 20 F.Supp. 668, 674.

An injunction governs the relations of the parties in the future. If, in view of the amended answer and the proofs to which it was allowed to conform, it is clear that an injunction should not issue in this case, it matters not that the reason for refusing the issuance thereof is based, partly at least, on facts occurring after the suit began. Although the new Rules of Civil Procedure, 28 U.S.C.A. following section 723c, have, I believe, not been applied as yet to copyright causes — see Rule 81 — I think, nevertheless, that the attitude I am taking towards the pleadings herein is justified on general equitable principles, and certainly would be specifically in accordance with those Rules if they had now been made applicable herein. E. g., Rules of Civil Procedure, No. 8(f) and No. 15(b) and (c).

VI. The claim in respect of Picture No. 858 has been — quite appropriately — withdrawn, as there was undoubtedly publication, both in this country and abroad, before any statutory steps to copyright that picture here were taken.

Such an informal method of withdrawing one branch of a claim like this could be passed without further notice, if it were not for the fact that a status — namely, a copyright monopoly — is involved.

Consequently, whilst I very much appreciate the attitude of counsel for the plaintiff in withdrawing No. 858 from consideration and relieving me from dealing with that part of this cause, I cannot allow an informal withdrawal of a copyright claim. Cf. Lewis Invisible Stitch Machine Co. v. Columbia Blind Machine Mfg. Co., D.C., 22 F.Supp. 705.

I hold that the copyright was invalid in respect of No. 858 by reason of previous publication in the United States and abroad, without the required statutory notice of United States copyright, and that the status of that picture must be definitely disposed of herein in order that there shall not be any claim for copyright thereof hanging as a threat over the trade involving these religious pictures.

Consequently, there must be a formal judgment dismissing the complaint in respect of Picture No. 858.

VII. The crucial questions which emerge from the facts proved in this cause are —

1. Whether the copyrights of the catalogues were void ab initio in respect of some of the photographs portrayed therein by reason of —

(a) Prior publication in Italy of reproductions of those photographs without any United States copyright notice on them, or

(b) The fact that in respect of two of the catalogues, the copyright applications and the resultant certificates were false, because the time of publication for United States copyright purposes was antedated therein.

2. Whether, if any of the copyrights were valid, they were lost by reason —

(a) Of failure of copyright markings on individual photographs or reproductions, or

(b) Of the insufficiency of such markings, or

3. If not, whether, for the reasons in 2(a) and 2(b) the defendant was, in respect of some of the photographs, an innocent infringer within the meaning of Section 20 of the Copyright Act. 17 U.S.C.A. § 20.

VIII. All the plaintiff's difficulties involved in this somewhat complicated case arise, in my opinion, from the fact that he did not follow what would have been the normal procedure, and copyright in the United States as works of art the reproductions of the paintings which had been made for him in Italy. But, instead, apparently for reasons of economy — as his amazing correspondence with Riccamboni shows — he tried to put a blanket copyright on the artistic conception of all six paintings here involved by copyrighting catalogues containing reproductions of them.

The chronology involved in the situation necessarily must have been, and I find it was, this:

First, a painting of each subject was made;

Second, a photographic reproduction of the painting was made; and

Third, there was made a reproduction in the catalogue by rotogravure or similar process of this photographic reproduction.

The religious picture trade deals in photographs, — sometimes made direct from a painting and sometimes from other photographs, and in other forms of reproductions, — sometimes colored and sometimes not — embodying the artistic conception of paintings.

In view of the fact that the United States is not a member of what is called the Berne International Copyright Union, it is required, to secure a copyright here, that any publication in a foreign country must contain a notice of United States copyright.

There obviously arises, in such a procedure as is above outlined, many opportunities by which the artistic conception embodied in the paintings or photographs involved thereon can,—by lack of or insufficiency in copyright marking on the photographs — escape into the public domain, and thus, according to the time of such escape, either prevent the securing of a valid United States copyright therefor, or cause loss of any such copyright as has been secured.

IX. Agreed translations of the parts of the copyright law of the Kingdom of Italy, deemed by the parties relevant herein, are as follows:

"Art. 26. Duration of an Author's Rights. The author's right commences with the first execution or representation or publication of the work, and continues for all the life of the author and for fifty years after his death, except as to the exceptions set forth in the present decree.

"Subsequent...