Dave Grossman Designs, Inc. v. Bortin

• Decision Date: 26 May 1972
• Docket Number: No. 71 C 1798.,71 C 1798.
• Citation: 347 F. Supp. 1150
• Parties: DAVE GROSSMAN DESIGNS, INC., a Missouri corporation, Plaintiff, v. Jack BORTIN, Individually and as President of Harold Studios, Inc., an Illinois corporation, et al., Defendants.
• Court: U.S. District Court — Northern District of Illinois

347 F. Supp. 1150

DAVE GROSSMAN DESIGNS, INC., a Missouri corporation, Plaintiff, v. Jack BORTIN, Individually and as President of Harold Studios, Inc., an Illinois corporation, et al., Defendants.

No. 71 C 1798.

United States District Court, N. D. Illinois, E. D.

May 26, 1972.

COPYRIGHT MATERIAL OMITTED

William J. Stellman, William E. Recktenwald, Hofgren, Wegner, Allen, Stellman & McCord, Chicago, Ill., for plaintiff.

Edward C. Threedy, Chicago, Ill., for defendants.

MEMORANDUM OPINION

WILL, District Judge.

The plaintiff has invoked the jurisdiction of this Court under Sections 1332 and 1338 of Title 28 and Section 1125 (a) of Title 15 of the United States Code in a three-pronged attack against defendants' manufacture of certain statues of children which allegedly are copies of certain statues owned by plaintiff. In Count I of its complaint, the plaintiff alleges that the defendants' statuary infringe ten copyrights held by the plaintiff. Count II of the complaint alleges that the defendants manufacture and distribute these items in violation of Section 43(a) of the Lanham Trademark Act, 15 U.S.C. § 1125(a), in that the defendants have adopted in their statuary the same types of styles, coloring, packaging and distribution as utilized by plaintiff in its manufacture, packaging and distribution of its line of statuary. Count III of the plaintiff's complaint alleges that these same actions of the defendants in adopting a trade dress for their statuary that so closely resembles that utilized by the plaintiff is a violation of the Uniform Deceptive Trade Practices Act of the State of Illinois, Ill.Rev.Stat., Ch. 121½, § 311 et seq. The defendants have moved for summary judgment on numerous grounds.

I

The defendants' initial assault on the complaint is their argument that the first cause of action, which allegedly arises under the Copyright Act, 17 U.S.C. § 1 et seq., fails to state a claim for which relief can be granted. The defendants allege that Count I of the complaint merely charges them with copying the dominant features of the plaintiff's line of statuary in varying versions rather than copying any one of the statues in its entirety, that it fails to set forth which of the defendants' numerous statues are copies of which of the plaintiff's numerous copyrighted statues, and that it alleges that all of the plaintiff's ten copyrights are infringed by all of the ten accused statues of the defendants. Accordingly, the defendants claim, they are entitled to summary judgment on the copyright claim.

The defendants' motion as here involved must be characterized as a motion to dismiss alleging that the complaint does not state a claim for which relief can be granted. We have read the complaint and believe that, although Count I (the copyright count) could have been more precisely articulated, it nevertheless states a cause of action. The complaint informs the defendants with the minimum particularity required by the Federal Rules of Civil Procedure that it owns ten copyrights and that the defendants are charged with violating them by the manufacture and sale of their ten accused statues. Whether or not the alleged copying of only the dominant features of plaintiff's statuary will be enough to support a finding on the merits of infringement, see Part III of this opinion, infra, the plaintiff does allege copying of the copyrighted works and therefore does state a cause of action under the copyright laws sufficient to withstand what is, in essence, a motion to dismiss for failure to state a claim.

II

The defendants next move for summary judgment based upon grounds which they entitle "Originality re invalidity." They argue that the plaintiff's copyrights are invalid because the pieces that are copyrighted are not original so as to allow a valid copyright to have issued for them. They state that prior to the initial publication of the plaintiff's copyrighted statuary, the sculptress, Ann Entis, authorized several articles to be printed in the magazine CERAMICS MONTHLY in which she explained how to sculpt children's faces in a certain style (which style is alleged to contain the dominant features of all her statues of children). Included in these magazine articles were photographs of a number of pieces of children's statuary she had finished, all of which possessed these dominant facial features, although none of these articles was published with the copyright notice required by Section 10 of the Copyright Act, 17 U.S.C. § 10. In addition, the defendants allege, statues of the sculptress Ann Entis which possess these same dominant facial characteristics (which works are not directly involved in this litigation) that likewise do not satisfy the requirements needed to obtain statutory copyright protection can be purchased in the open market. Thus, the defendants argue, the dominant facial features used by Ann Entis in her works of children are in the public domain and may not be copyrighted by the plaintiff.

That this argument is specious is apparent by even the most cursory review of copyright law. It must be noted initially that the plaintiff does not have a copyright upon the "dominant features" utilized by Ann Entis in her sculpture. Rather, they have copyrights on ten individual expressions of her motif which appear in the form of ten different statues. The only issue that is involved in determining whether the copyrights on these ten items is valid is to determine if they have met the requirement of originality required by the copyright laws.

The issue of the originality needed in a work of art to obtain a valid copyright thereon has been succinctly summarized by Judge Friendly in Puddu v. Buonamici Statuary, Inc., 450 F.2d 401 (2d Cir. 1971). In that case, as here, the sculptor of the works which were copyrighted had previously created similar statues which had not been copyrighted. The alleged infringer contended as a defense that the copyrights on the plaintiff's statuettes were invalid because no significant differences existed between those statuettes and the uncopyrighted ones the sculptor had created earlier. In rejecting this contention, the Court stated at 450 F.2d 402:

Although "the Copyright Act nowhere expressly invokes the requirement of originality," courts have uniformly inferred this from the constitutional and statutory condition of authorship. Nimmer, Copyright, § 10 at 32 (1971 ed.). However, originality has been considered to mean "only that the work owes its origin to the author, i. e., is independently created and not copied from other works." Id. § 11 at 33 (footnote omitted) . . . . While there is a strong family resemblance between the copyrighted and the uncopyrighted models, the differences suffice to satisfy the modest requirement of originality laid down by the Supreme Court in Bleistein v. Donaldson Lithographing Company, 188 U.S. 239, 250, 252 , 23 S.Ct. 298, 47 L.Ed. 460 (1903) and by this court in Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951), and Millworth Converting Corp. v. Slifka, 276 F.2d 443, 444-445 (2d Cir. 1960). While the district court made much of the fact that defendant's statuettes differ from the copyrighted models in minor respects, that does not carry the day for the defendant unless the differences are sufficient to negate infringement. The tests for eligibility for copyright and avoidance of infringement are not the same. Originality sufficient for copyright protection exists if the "author" has introduced any element of novelty as contrasted with the material previously known to him. . . . (emphasis added)

See also, Roth Greeting Cards v. United Card Company, 429 F.2d 1106 (9th Cir. 1970); Day-Brite Lighting, Inc. v. Sta-Brite Fluorescent Manufacturing Company, 308 F.2d 377 (5th Cir. 1962); Best Medium Publishing Company v. National Insider, Inc., 385 F.2d 384 (7th Cir. 1967), cert. denied, 390 U.S. 955, 88 S.Ct. 1052, 19 L.Ed.2d 1150 (1968); Scott v. WKJG, Inc., 376 F.2d 467 (7th Cir. 1967), cert. denied, 389 U.S. 832, 88 S.Ct. 101, 19 L.Ed.2d 91 (1967).

Assuming that the failure of Ann Entis to put the required copyright notice on her statuary referred to by the defendants prior to their general publication placed those works in the public domain, we nevertheless conclude that each of the ten statues covered by plaintiff's copyrights, which have been submitted to the Court in the form of photographs or actual reproductions thereof, are sufficiently different from Ann Entis' prior works so as to be original insofar as obtaining copyrights are concerned. These copyrights, therefore, are valid from this point of view. In any event, the defendants are not entitled to summary judgment on the basis of lack of originality.

The defendants' next argument is that the plaintiff produced and sold three particular statues, those identified as EN 18, EN 19 and EN 20, all of which bear the copyright notice "©DGD Inc. 1969" even though it had no assignment of copyright rights in these statues. Thus, the defendants argue, the copyright notices that were provided on these three pieces of statuary were defective in that, if no assignment of the common law copyright had been made to the plaintiff, the copyright holder, apparently Ann Entis, lost that protection when the pieces were published with a copyright notice indicating the holder to be someone other than herself. In support of their factual assertion that the plaintiff did not possess any assignment rights to the three statues, the defendants have referred the Court to certain depositions taken of the plaintiff's officers.

We note initially that the assignment of a common law copyright need not be in writing and may even arise by implication from conduct. Nimmer, Copyright, § 120.1 at 522.1 (1971 ed.). But even assuming the validity of the defendants' factual assertion that the plaintiff possessed no interest in these three statues, which assertion, incidentally, has not been...