Blazon, Inc. v. DeLuxe Game Corp.

• Citation: 268 F. Supp. 416
• Decision Date: 11 May 1965
• Docket Number: No. 65 Civ. 697.,65 Civ. 697.
• Parties: BLAZON, INC., Plaintiff, v. DeLUXE GAME CORP., Defendant.
• Court: U.S. District Court — Southern District of New York

268 F. Supp. 416

BLAZON, INC., Plaintiff, v. DeLUXE GAME CORP., Defendant.

No. 65 Civ. 697.

United States District Court S. D. New York.

May 11, 1965.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Davis, Hoxie, Faithfull & Hapgood, New York City, Ely, Goldrick & Flynn, Cleveland, Ohio, Albert L. Ely, Jr., Cleveland, Ohio, of counsel, for plaintiff.

Arnold Fein, New York City, for defendant.

MEMORANDUM—OPINION

TENNEY, District Judge.

Plaintiff moves herein for a preliminary injunction to restrain defendant from further infringing plaintiff's copyrighted work. The complaint as drawn avers a cause of action for copyright infringement and for unfair competition. The alleged infringing item is defendant's hobby horse named "Thunder" which plaintiff asserts infringes upon its copyrighted hobby horse "War Cloud". Jurisdiction of this Court is invoked under Section 1338(a) and (b) of Title 28 of the United States Code (28 U.S.C. § 1338(a), (b) (1962).

Plaintiff's complaint is predicated on the assumption that the horse displayed in defendant's showroom and seized pursuant to a writ of seizure dated March 8, 1965, is the alleged infringing item. It is clear, however, that the seized and displayed item is in fact plaintiff's own horse, admittedly bought by defendant and displayed by it in its showroom.

It is further not disputed that defendant repainted plaintiff's item and in the process painted over the copyright notice, and, in addition, it appears that plaintiff's trademark was replaced with its own. While that much is not disputed, there is much dispute as to the reasons for defendant's actions, the use to which the item was put, and statements made by defendant's salesmen with respect to the item.

Insofar as the horse seized and displayed is concerned, it is clear that plaintiff cannot, based on that use of the item, ground an action for copyright infringement.

It is clear that before there can be infringement there must be both an averment and some proof of copying (Affiliated Enterprises, Inc. v. Gruber, 86 F. 2d 958 (1st Cir. 1936); see Nimmer, Copyright § 137.1 (1963)), and as a matter of logic there can be no copying in the case at bar where the horse seized and alleged to copy "War Cloud" is in fact "War Cloud", nor is there an infringement upon any of plaintiff's other protected rights by reason of the display of the copyrighted work. For a full discussion of possible rights protected, see Appendix "A", hereto.

Furthermore, if it can be held that the display of "War Cloud" by defendant constituted a copying of "War Cloud" and/or a violation of any other rights, and therefore an infringement of the copyright, there is no showing of any harm, much less irreparable harm, by denying the motion for the injunction. While it cannot be doubted that after a prima facie showing is made by plaintiff of copyright validity and infringement, plaintiff need not make a detailed showing of danger of irreparable harm (Rushton Co. v. Vitale, 218 F.2d 434 (2d Cir. 1955)), nonetheless, as Professor Nimmer points out, "the Court may nevertheless deny a preliminary injunction if the plaintiff's damages appear to be trivial Consumers Union of United States, Inc. v. Hobart Mfg. Co., 189 F. Supp. 275 (S.D.N.Y.1960) * * * or possibly if the plaintiff fails to indicate a sufficient likelihood of immediate irreparable injury to satisfy the granting of such relief. See Platt & Munk Co. Inc. v. Republic Graphics, Inc., 218 F. Supp. 262 (S.D.N.Y.1962), modified, 315 F.2d 847 (2d Cir. 1963)". Nimmer, supra, § 157.2 at 698. In the case at bar the model of "War Cloud" that was displayed has been seized, and accordingly there can be no further infringement by its continued display. In addition, there is no indication nor averment by plaintiff that defendants will buy another "War Cloud" and display it in place of the seized horse.

However, if we broadly construe plaintiff's complaint, there can be read therein an alternative but more substantial allegation of copyright infringement. For plaintiff asserts that defendant's hobby horse "Thunder" infringes plaintiff's copyrighted horse "War Cloud" and this can be construed as averring that "Thunder", whether it be the horse seized by the Marshal, or the horse displayed in photographs furnished by defendant's counsel to the Court and to plaintiff, infringes on "War Cloud". It is admitted that the horse in the photographs was also on display in defendant's showrooms. Accordingly, we must now ascertain whether "Thunder" as portrayed in the picture is an infringing work.

Of necessity, the first item to be decided is the validity of plaintiff's copyright.

While defendant questions whether a hobby horse is entitled to copyright protection since all hobby horses flow from an effort to simulate real horses (Gurbst Affidavit, Mar. 29, 1965, at 12), it is no longer subject to dispute that statues or models of animals or dolls are entitled to copyright protection, see e. g., F. W. Woolworth Co. v. Contemporary Arts, Inc., 193 F.2d 162 (1st Cir. 1951) (model of a dog in a "show" position); Rushton Co. v. Vitale, 218 F.2d 434 (2d Cir. 1955) (chimpanzee); Ideal Toy Corp. v. Adanta Novelties Corp., 223 F.Supp. 866 (S.D.N.Y. 1963) ("Tammy" doll), and accordingly a model horse, per se, is copyrightable.

Plaintiff has annexed to his complaint the registration certificate covering "War Cloud". Section 209 of the Copyright Act (17 U.S.C. § 209 (1952)) provides that the registration certificate issued by the copyright office "shall be admitted in any court as prima facie evidence of the facts stated therein." This in effect means that a plaintiff, in a copyright infringement action based on a statutory copyright, is entitled to a prima facie presumption of originality since among the facts to be set forth in the certificate is a statement of the author of the work and "authorship presumptively connotes originality." Remick Music Corp. v. Interstate Hotel Co., 58 F.Supp. 523, 531 (D.Nebr.1944), aff'd, 157 F.2d 744 (8th Cir. 1946); see Drop Dead Co. v. S. C. Johnson & Son, Inc., 326 F.2d 87, 92 (9th Cir. 1963), cert. denied, 377 U.S. 907, 84 S.Ct. 1167, 12 L.Ed.2d 177 (1964).

Defendant does not directly attack the originality of "War Cloud." At a number of points in the affidavits submitted in opposition to the motion, defendant does infer that perhaps "War Cloud" is based on one of its (defendant's) prior hobby horse models, "Flash". Thus, for example, in the Affidavit of Herbert Gurbst, Vice President of defendant corporation (dated March 25, 1965), he avers: "During the years 1963 to 1964 plaintiff has copied exactly from defendant and sold a number of lines of hobby horses. Plaintiff may very well have based its `War Cloud' model, subject of this motion, on copies of defendant's models." Id. at 12. (Emphasis added.)

At the hearing, defendant produced prior models of its hobby horse line and compared them with other models of plaintiff's line, attempting to show that plaintiff had on prior occasions copied its models from defendant's. However, no specific attempt was made demonstrating how by reason of the copying of these other models, plaintiff had copied "War Cloud" as well. A similar veiled inference appears at page 13 of the same Gurbst Affidavit wherein he asserts that "under these circumstances one of defendant's former employees having been hired by plaintiff it is not surprising that plaintiff's `War Cloud' has the characteristic appearance of defendant's `Flash'.¹ (See Affidavit of Milton Henry, at page 3. "It is also immediately evident on visual inspection that plaintiff modeled its `War Cloud' after defendant's `Flash'.")

Is this a sufficient attack on the originality of "War Cloud"? I think not.

"With respect to the issue of plaintiff's originality upon introduction of the certificate of registration * * * the burden shifts to the defendant to prove that plaintiff copied from a prior source and hence was not original. Mere denial by the defendant, unsupported by evidence, is not sufficient to overcome the prima facie presumption of plaintiff's originality." Nimmer, supra, at § 139.2 at 602. And "proof that plaintiff copied from prior works should involve the same elements as are required to establish copying by the defendant, i. e., access and similarity." Id. at 602, n. 235.

The fact that plaintiff took a matter admittedly in the public domain, (i. e., a horse) does not in and of itself preclude a finding of originality, since plaintiff may have added unique features to the horse, enlarged it and made it sufficiently dissimilar from defendant's horse as to render it copyrightable to plaintiff. See Doran v. Sunset House Distrib. Corp., 197 F.Supp. 940, 941 (S.D. Calif.1961), aff'd, 304 F.2d 251 (9th Cir. 1962) (Santa Claus); Alva Studios, Inc. v. Winninger, 177 F.Supp. 265 (S.D. N.Y.1959) (Replica of Rodin's "Hand of God" in a reduced size); and cases cited supra at 421.

In addition, the thrust of defendant's affidavits, while seemingly discussing originality, are directed more to the matter asserted in its counterclaim (i. e., that one of defendant's former employees transmitted trade secrets to plaintiff, which presumably assisted it in the production of "War Cloud" and that, accordingly, a trust should be impressed on plaintiff's copyright), rather than to an attack on the originality per se of "War Cloud" insofar as it relates to the question of copyright. Accordingly, the affidavits will be so construed on the instant motion.

Thus in view of the failure of proof by the defendant, and in view of the disposition of the within motion, for the purposes of the present proceeding the Court will assume the originality of "War Cloud" and that plaintiff's copyright is valid and subsisting.

While copyright validity has thus been assumed, copyright infringement cannot also be assumed. Plaintiff must show copying to sustain his burden of proof. Direct evidence of copying...