Eckes v. Card Prices Update

• Decision Date: 08 June 1984
• Docket Number: No. 1150,D,1150
• Citation: 222 U.S.P.Q. 762,736 F.2d 859
• Parties: , 1984 Copr.L.Dec. P 25,672 Dennis W. ECKES and James Beckett, III, Plaintiffs-Appellants, v. CARD PRICES UPDATE and Suffolk Collectables, Defendants-Appellees. ocket 83-7920.
• Court: U.S. Court of Appeals — Second Circuit

Page 859

736 F.2d 859

222 U.S.P.Q. 762, 1984 Copr.L.Dec. P 25,672

Dennis W. ECKES and James Beckett, III, Plaintiffs-Appellants, v. CARD PRICES UPDATE and Suffolk Collectables, Defendants-Appellees.

No. 1150, Docket 83-7920.

United States Court of Appeals, Second Circuit.

Argued May 9, 1984.

Decided June 8, 1984.

Herman Kaufman, New York City (Litman, Kaufman & Asche, New York City, of counsel), for plaintiffs-appellants.

Salvatore A. Alamia, Babylon, N.Y., for defendants-appellees.

Before FEINBERG, Chief Judge, WINTER, Circuit Judge and LASKER, District Judge. ^*

FEINBERG, Chief Judge:

Dennis W. Eckes and James Beckett, III, appeal from a judgment of the United States District Court for the Eastern District of New York, I. Leo Glasser, J., 575 F.Supp. 459 (E.D.N.Y.1983), finding that appellee companies, Card Price Update and Suffolk Collectables, had not infringed appellants' soft-covered book, entitled the "Sport Americana Baseball Card Price Guide" (the Guide). Following a non-jury trial, the court found that while the Guide was protected by the copyright laws, appellants had failed to prove that appellees had copied from the Guide in putting together their work, entitled "Card Prices Update" (CPU). For the reasons stated below, we believe the court erred in concluding that there was no infringement, and we reverse the judgment of the district court.

I.

The schoolyard passion for flipping baseball cards apparently engenders lasting interest for a sizeable part of the population, since this lawsuit arises out of the adult hobby of collecting baseball cards. The facts can be briefly stated: Appellants wrote the Guide, and published it in approximately February 1979. The book was copyrighted and registered. A second edition of the Guide also was copyrighted, registered and issued in approximately March 1980. The Guide is a comprehensive listing of baseball cards manufactured in the 70-year period from 1909 to 1979. Appellees concede that the Guide is the first extensive listing of its kind.

The Guide lists some 18,000 different baseball cards and in each case furnishes the going market price. Some cards are quite valuable. For example, appellant Eckes testified that a set of 407 cards released by Topps Chewing Gum Company in 1952 sells now for $7,000-$8,000, and that the Mickey Mantle card in this group is worth about $800. Each card is listed in a number sequence in each of approximately 100 different sets, with the corresponding price of each card. A set includes all cards of the same type or design produced by a particular manufacturer during a calendar year. The Guide also gives the prices for each card according to its condition: mint, very good/excellent and fair/good. In addition, the cards are placed into two groups: premium or star cards, and common cards. There are approximately 5,000 of the former, and they are considered particularly valuable because of the player featured on the card, e.g., a hall of famer, a rookie of the year, or because of the team on which he plays, or because of some characteristic of the card itself, such as an imperfection or the scarcity of the card. Common cards consist of the remaining cards listed in the series covered.

The Guide is primarily the product of appellant James Beckett, III, a statistician with a Ph.D. in statistics. Beckett had been interested in baseball collecting for some time prior to producing the Guide, and had written a nationwide price survey of baseball cards. Beckett testified that he worked on the Guide for 40 hours a week for eight straight months. Relying on his extensive knowledge of trading in baseball cards and his background in statistics, Beckett compiled the prices for all the cards and placed them into either the premium or common category.

Some three months after the Guide was released, Mark Lewis, a principal of appellee companies, decided to publish a monthly "update" of baseball card prices. Lewis admitted he was "new" to baseball card collecting but claimed the creation of CPU was "a very simple process." It was so simple, according to Lewis, that it took him only nine weeks to publish the first issue of CPU, including accumulation of information on thousands of cards. CPU was published in a newspaper form, indicated the trends in prices by a plus or minus and listed separately only premium cards; however, its listing contained substantially the same 5,000 cards that the Guide had listed as premium cards. Although CPU appears to list only one price for each card, CPU, like the Guide, actually offers different prices for each card listed. CPU's "Condition Guide," located on the inside cover, explains that prices for cards vary according to given percentage multiples, depending on the condition of each card. Though Lewis conceded access to the Guide, testifying it was a "bible" and that "Beckett was the authority," Lewis vigorously and persistently denied copying from the Guide in producing CPU. Nevertheless, many of the prices and pictures in CPU are the same as those in the Guide, and a number of inadvertent errors in the Guide, including misspellings, inconsistent use of abbreviations and obvious omissions, are repeated in CPU. In addition, there was testimony of public confusion as to whether CPU was an update of, or otherwise connected with, the Guide.

In June 1980, appellants brought suit in the district court for copyright infringement. After a trial before Judge Glasser, the judge found for appellees. The court characterized Lewis's testimony as "evasive," and also found the testimony of appellants' witnesses "entirely credible." The court found the Guide to be a protected work under copyright law and that appellees' choice of premium cards was sufficiently similar to appellants as to warrant "a suspicion of copying." Nevertheless, although the judge thought the issue was "extremely difficult," he held that the "variations" between the two publications in the prices listed for the cards "render [appellees'] work not so substantially similar as to justify a finding of copyright infringement." 575 F.Supp. at 464 (footnote omitted). This appeal followed.

II.

In this court, appellants contend that the Guide contains the requisite originality to warrant copyright protection, and that there was ample proof of copying. Not surprisingly, appellees disagree on both counts; they particularly press their contention, rejected by the district court, that appellants' copyright registration is invalid and unenforceable. We consider that question first.

In order to prove copyright infringement, appellants "must show ownership of a valid copyright and copying by the defendant." Novelty Textile Mills, Inc. v. Joan Fabric Corp., 558 F.2d 1090, 1092 (2d Cir.1977). Appellants introduced into evidence a timely obtained Copyright Office certificate of registration, which "constitute[s] prima facie evidence of the validity of the copyright ...," 17 U.S.C. Sec. 410(c). Appellees claim that the presumption of validity was overcome because there were material omissions on appellants' application form submitted to the Copyright Office. In particular, appellees contend that appellants "failed or refused to complete" portions of the copyright registration form regarding their previous works: "Sport Americana Bicentennial Edition 1976" and "Sport Americana 1978 Edition." However, we agree with the district court's findings that the 1979 publication of the Guide represented a substantial change from the 1976 and 1978 publications. The latter consisted merely of baseball card set checklists; the Guide, on the other hand, was a more comprehensive listing, which assigned values for each card listed, depending on their condition. Also, the Guide classified the cards into two groups, those selling at only average prices (common cards) and those commanding higher than average prices (premium cards).

In addition, the court clearly and justifiably believed that appellants' omissions in the copyright application were inadvertent and innocent. Only the "knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action ... or denying enforcement on the ground of unclean hands...." Russ Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F.Supp. 980, 988 (S.D.N.Y.1980) (citations omitted); see also Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409, 412 (2d Cir.1970) (one error made in "good faith" and the other "clearly innocent" omission), cert. denied, 401 U.S. 977, 91 S.Ct. 1200, 28 L.Ed.2d 326 (1971); Advisors, Inc. v. Wiesen-Hart, Inc., 238 F.2d 706, 708 (6th Cir.1956) (per curiam) ("an innocent misstatement ... in the affidavit and certificate of registration, unaccompanied by fraud or intent to extend the statutory period of copyright protection, does not invalidate the copyright, nor is it thereby rendered incapable of supporting an infringement action"), cert. denied, 353 U.S. 949, 77 S.Ct. 861, 1 L.Ed.2d 858 (1957). Accordingly, we agree with the district court that the presumption of 17 U.S.C. Sec. 410(c) was not overcome because of fraud.

Appellees next argue that the Guide cannot be protected under the Copyright Act of 1976, 17 U.S.C. Secs. 101 et seq. Appellees recognize, as they must, that compilations are specifically protected under the Act. Id. Sec. 103. The Act defines a compilation as "a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." Id. Sec. 101. Appellees contend, however, that copyright protection does not extend either to the idea of a baseball card compilation, id. Sec. 102(b); Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460, 470-71, 98 L.Ed. 630 (1954) (protection covers only...