Carol Barnhart Inc. v. Economy Cover Corp.

• Decision Date: 12 September 1984
• Docket Number: No. CV 83-5372.,CV 83-5372.
• Citation: 594 F. Supp. 364
• Parties: CAROL BARNHART INC., Plaintiff, v. ECONOMY COVER CORP., Defendant.
• Court: U.S. District Court — Eastern District of New York

594 F. Supp. 364

CAROL BARNHART INC., Plaintiff, v. ECONOMY COVER CORP., Defendant.

No. CV 83-5372.

United States District Court, E.D. New York.

September 12, 1984.

Blum, Kaplan, Friedman, Silverman & Beran, New York City, for plaintiff.

Bierman, Bierman & Peroff, New York City, for defendant.

MEMORANDUM AND ORDER

WEXLER, District Judge.

Plaintiff Carol Barnhart Inc. (Carol Barnhart) brings this action for copyright infringement pursuant to the Copyright Act (the Act), 17 U.S.C. Section 101 et seq. Defendant Economy Cover Corporation (Economy Cover) now moves pursuant to Rule 56(c), Fed.R.Civ.P., for summary judgment on the issue of copyrightability and plaintiff cross-moves for partial summary judgment seeking to strike defendant's first and third affirmative defenses.

I.

Carol Barnhart was founded in 1982 by its namesake and president. The company produces retail store display wares, mostly human display forms for clothing. Economy Cover is a thirty-year old business that sells display products ranging from retail display forms to wire hangers and plastic garment covers. Economy Cover sells to jobbers and distributors, and occasionally to national chain stores, in the United States, Puerto Rico, Canada, Australia, and the United Kingdom. In contrast, Carol Barnhart sells its products to department stores, distributors, and small retailers. Plaintiff claims to sell "a total concept," including display suggestions.

At issue are four display forms or manequins of partial human torsos. They are shoulder to waist life-size forms without necks, arms, or backs, made of expandable white styrene. In 1982 the plaintiff's president created these display forms from clay, fabric, and buttons, immediately building aluminum molds for manufacturing the poly-styrene forms (Affidavit of Carol Barnhart, Para. 5). Two of the forms are of female upper torsos, two are male, one each of the male and female torsos are unclad for the purpose of displaying shirts and sweaters. The other two are sculpted with shirts for displaying sweaters and jackets. All the forms are life-like and anatomically correct. The hollow back is designed to hold excess fabric when the garment is fitted on the form. Carol Barnhart's advertising specifies that the forms are packaged in "UPS size boxes for easy shipping and sold in multiples of twelve" (Affidavit of Arthur Zelnicker, Exs. 3A-D).

After making the mold for the shirt-clothed male torso (Men's Shirt), Carol Barnhart produced 3,000 of the forms and began marketing them to department stores. Within four months the company had $18,000.00 worth of orders. Carol Barnhart then created and manufactured the shirt-clad female torso (Women's Shirt), the naked Men's Chest, and the naked Women's Chest. In December 1982 plaintiff had a booth at the National Association of Display Industries (NADI) trade show and displayed the four forms at issue. In one morning plaintiff took in $35,000.00 worth of orders (Barnhart Affidavit, Para. 8). In June 1983 plaintiff joined NADI. In early 1983 Economy Cover examined Carol Barnhart's four display forms and found no copyright mark (Zelnicker Affidavit, Para. 7; Affidavit of Neil Carpentier, Para. 3). In September 1983 Economy Cover came out with four display forms of partial human torsos called Ladies' Blouse Form, Ladies' Sweater Form, Men's Shirt Form, and Men's Sweater Form (Zelnick Affidavit, Exs. 1A-D). For the limited purpose of this summary judgment motion Economy Cover admits that these four Easy Pin Shell Forms were copied from plaintiff's Women's Chest, Women's Shirt, Men's Chest and Men's Shirt forms respectively, and are substantially similar to Carol Barnhart's forms (Defendant's Statement of Facts pursuant to Local Rule 3(g)). Defendant's forms are sold by the half dozen and have a threaded piece for attachment to a swivel stand.

On September 26, 1983, the plaintiff's president addressed a letter to the directors of NADI objecting to defendant's duplication and sale of the four forms and asking the organization to intervene. Specifically, the president complained that defendant was selling the forms at a lower price, hurting plaintiff's immediate income potential, and flooding the market so as to "create an obsolescence ... in a much shorter time than ... anticipated." (Affidavit of Jordan Bierman, Ex. 1). NADI did undertake to present plaintiff's case to Economy Cover. In a letter dated October 17, 1983 counsel for the defendant pointed out to the Ethics Committee of NADI that Carol Barnhart had no copyright, trademark, or patent protection and could not claim exclusivity (Bierman Affidavit, Ex. 2). On October 17, 1983, Carol Barnhart applied for copyright registration for a number of products, including the four forms at issue here. Plaintiff claimed the forms were sculpture and asked for expedited registration in anticipation of litigation. Copyright registration was granted the same day.¹ Plaintiff immediately sent notice to defendant that the four Easy Pin Shell Forms infringed on its copyright (Plaintiff's Book of Exhibits to Affidavits, Ex. 15) and by letter asked customers to affix copyright labels to previously purchased forms (Zelnicker Affidavit, Ex. 2).

II.

Economy Cover now moves for summary judgment on the ground that four Barnhart forms are not copyrightable. Defendant maintains that the forms are utilitarian objects and as such are specifically excluded from copyright protection. 17 U.S.C. Section 101. Plaintiff counters that these four display forms transcend function and are sculpture, copyrightable as artistic creations. Accordingly, plaintiff cross-moves for partial summary judgment striking defendant's first and third affirmative defenses.

Initially, plaintiff raises some question as to whether this matter is the proper subject of a summary judgment motion by defendant on the issue of copyrightability, contending that there are genuine issues of material fact inherent in Economy Cover's position. At the same time plaintiff argues that its motion for partial summary judgment on copyrightability raises no issue of genuine fact. To reach this conclusion the plaintiff asks this Court to make an exceedingly fine and rigid reading of Local Rule 3(g) of the Civil Rules of the Eastern District of New York. This the Court will not do. Both parties have submitted the requisite short statements of material facts contended not to be at issue accompanied by affidavits and exhibits. This Court will not abet a battle of Rule 3(g) statements requiring examination and comparison of the statements phrase for phrase for technical admissions and controversions. The uncontroverted facts necessary for deciding this motion have been outlined above by the Court.

Summary judgment is now a recognized means of disposing of issues in copyright infringement litigation. Hoehling v. Universal Studios, 618 F.2d 972, 977 (2d Cir.1980). That it is appropriate in instances where copyrightability is at issue is also recognized. Kieselstein-Cord v. Accessories By Pearl, Inc., 632 F.2d 989 (2d Cir.1980). The decision to issue a certificate of copyright registration in the first place is a matter of expert "interpretation of the law and its application to the facts presented by the copyright application" on the part of the Copyright Office. Norris Industries, Inc. v. International Telephone and Telegraph Corp., 696 F.2d 918, 922 (11th Cir.), cert. denied, ___ U.S. ___, 104 S.Ct. 78, 78 L.Ed.2d 89 (1983). This exactly describes the role of the Court in deciding a motion for summary judgment. The facts are before the Court in the shape of the four Barnhart forms and the Economy Cover copies. The Court need only apply the copyright law. Accordingly, this Court deems the issue of copyrightability a proper subject for summary judgment.

III.

At the threshold the plaintiff argues that the Copyright Office issuance of certificates of registration for Carol Barnhart's four forms is not merely prima facie evidence of copyrightability, but an insurmountable presumption of the validity of the copyrights. Plaintiff misapprehends the law. "It is clear ... that a certificate of registration creates no irrebuttable presumption of copyright validity." Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980). Moreover, the evidentiary weight given to the certificate is within the discretion of the Court. 17 U.S.C. Section 410(c). While the Court can rely on the Copyright Register's opinion on the issue of copyrightability, it should not accept it without question. The articles themselves give "mute testimony" on copyrightability, and evidence on the record can overcome the presumption created by the issuance of the certificate. Durham Industries, Inc. v. Tomy Corp., 630 F.2d at 908. The Copyright Office's scrutiny of an article for registration is not like the intense and prolonged scrutiny required for patent and trademark registration. Elements of copyrightability are viewed as largely legal questions and therefore equally within the expertise of the courts. See, 2 M. Nimmer on Copyright Section 7.21A at 7-150 (1980). The issuance of certificates of registration on the same day as the application is not an indication that the Copyright Office acted with great deliberation and careful consideration when it registered the Carol Barnhart works. Rather, as the application notes that the expedited consideration request is made in contemplation of litigation, it is reasonable to infer that the Copyright Office deferred to the courts the consideration of the copyrightability question. Consequently, this Court does not consider the certificates of registration as insurmountable evidence of copyrightability. They are prima facie evidence that can be rebutted.

The Court now turns to the substantive issue of copyrightability. Plaintiff maintains that the four display forms are copyrightable as sculpture. In support of this position plaintiff's counsel has...