FIRST AMER. ARTIFICIAL FLOWERS, INC. v. Joseph Markovits Inc.

• Decision Date: 24 March 1972
• Docket Number: No. 71-Civ. 5379.,71-Civ. 5379.
• Parties: FIRST AMERICAN ARTIFICIAL FLOWERS, INC. and Samuel S. Berger, Plaintiffs, v. JOSEPH MARKOVITS INC., Defendant.
• Court: U.S. District Court — Southern District of New York

342 F. Supp. 178

FIRST AMERICAN ARTIFICIAL FLOWERS, INC. and Samuel S. Berger, Plaintiffs, v. JOSEPH MARKOVITS INC., Defendant.

No. 71-Civ. 5379.

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

March 24, 1972.

COPYRIGHT MATERIAL OMITTED

Helfat & Helfat, New York City, for plaintiffs; by Bernard A. Helfat, New York City, of counsel.

Abeles & Clark, New York City, for defendant; by John S. Clark, New York City, of counsel.

CROAKE, District Judge.

OPINION

This is a copyright and unfair competition action wherein plaintiffs presently seek to preliminarily enjoin defendant from continuing to infringe its copyrighted work (Copyright No. Gp 55248). The individual plaintiff is the "author" of the work, the proprietor of the copyright rights therein, and the president of the corporate plaintiff-distributor. The complaint seeks a permanent injunction, $150,000 in damages, an accounting, the impounding and destruction of the accused work, and costs and fees of the action. See 17 U.S.C. § 101.

The parties agree that the unfair competition claim is not at issue on this motion, which therefore presents only copyright questions. Cf. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964); Compco Corp. v. Day-Brite Lighting Co., Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964). Defendant's opposition is based on the twin grounds of invalidity of plaintiff's copyright and independent creation of the uncopyrighted accused work.

The only novelty in this case is that the works involved are not literary or artistic works in two dimensions, but rather artificial flowers; more specifically, they are wire and polyethylene plastic sculptured reproductions of tea roses, which sell for about 15 cents each. The copyrightability of "three-dimensional" works such as these cannot be challenged, see Prestige Floral, S. A. v. California Artificial Flower Co., 201 F. Supp. 287, 289-291 (S.D.N.Y.1962); cf. Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), Puddu v. Buonamici Statutory, Inc., 450 F.2d 401 (2d Cir. 1971), but the effect of the present availability of this protection to such a wide range of "works of art." 17 U.S.C. § 5(g), has been to make each case depend more than ever on its own facts. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).

To satisfy its burden on this motion, plaintiffs must first establish the validity of their copyright against various challenges; if this burden is carried, they must then prove infringement, and that the equities favor issuance of a preliminary injunction. It is the opinion of the Court that, while the copyright in question does appear valid, at least on this record, plaintiffs have not made a sufficient showing of infringement.

I

Defendant has actually raised four challenges to the validity of plaintiffs' copyright: (1) the inclusion of an improper date in the notice of copyright rendered that notice ineffective to prevent a dedication to the public domain; (2) the falsity of the individual plaintiff's claim of authorship precludes protection of "his" work; (3) the abandonment of protection for a part of the work throws the entire work into the public domain; and (4) the violation of mandatory procedures by the deposit of an alleged nonconforming copy of the work in connection with the registration of the copyright results in the invalidation of the copyright thus obtained. A possible fifth argument, that the subject of a tea rose is too hackneyed to possess the novelty required for copyrightability, is summarily dismissed as going contrary to the well-recognized law. Thomas Wilson & Co., Inc. v. Irving J. Dorfman Co., Inc., 433 F.2d 409 (2d Cir. 1970), cert. denied, 401 U.S. 977, 91 S. Ct. 1200, 28 L.Ed.2d 326 (1971); see Gardenia Flowers, Inc. v. Joseph Markovits, Inc., 280 F.Supp. 776, 782-783 (S.D.N.Y.1968).

Plaintiffs' rose as presently marketed bears on its stem the copyright legend, "(c) by Samuel S. Berger 1969." The legend on the deposited copies is "(c) by Samuel S. Berger 1967." It is conceded that the date of publication of the work under 17 U.S.C.A. § 26 was May 1, 1967, as is accurately stated in the complaint and in the copyright registration application form, see Plaintiffs' Ex. A, 17 U. S.C. § 13.

Plaintiffs' attempt to excuse this error by explaining that their Hong Kong manufacturer of the rose in question, in preparing actual flowers for sale from the molds, unauthorizedly changed the date from "1967" to "1969" in the mistaken belief that the proper date should be the date of manufacture. All copies manufactured since at least 1969 have borne a "1969" date, the date when manufacture began, and the number of copies sold bearing a "1967" date is not apparent on this record. See 17 U.S.C. § 21.

It is understandable that a foreign national may not be acquainted with the details of United States copyright law; but it is equally clear that plaintiffs are generally responsible for the acts of their chosen agents, including their manufacturers, performed in the course of their agency. Therefore, while this excuse, in the absence of contrary evidence, might be sufficient to satisfy their burden of showing lack of scienter, cf. 17 U.S.C. §§ 105, 106, it is not by itself sufficient to remove this situation from the ambit of the Copyright Act and the sanctions envisaged in the statute and the cases for failure for whatever reason to comply with statutory formalities. The first challenge to the validity of the copyright, therefore, presents the question of whether a mistakenly postdated notice is adequate notice under the Act, 17 U.S.C. § 10.

At the threshold, it should be noted that the inclusion of any particular date in the notice of copyright was not statutorily required for a work of this type, since it is not "a printed literary, musical, or dramatic work," 17 U.S.C.A. § 19. The preliminary question, then, is whether publication with a notice of copyright which contains an inaccurate elective addition is nevertheless adequate notice.

There is some authority for the proposition that it is not:

". . . if the copyright owner elects to give the date of the copyright, the date given must certainly not be later than the actual date." Basevi v. Edward O'Toole Co., 26 F. Supp. 41, 48 (S.D.N.Y.1939).

However, the works therein involved, catalogs of reproductions of religious paintings, had been considered by the Court to be "books" and consequently to have required inclusion of the date of publication in the notice. 17 U.S.C. § 19. The above-quoted statement was therefore dictum; the Court was merely expressing the desire that whatever information is included in the notice should be accurate. It was not faced with the necessity to consider imposition of sanctions because of a misleading elective insertion. See also Rolland v. Henry Holt & Co., 152 F.Supp. 167, 168 n. (S.D.N.Y.1957).

The basic policy expressed in the Copyright Act of 1909, as amended, and its predecessor acts is to be found in the Constitution, Article I, Section 8:

"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; . . ."

The general policy of the statute, then, stated in the broadest of terms, is to afford protection. See Washingtonian Publishing Co. v. Pearson, 306 U.S. 30, 36, 59 S.Ct. 397, 83 L.Ed. 470 (1939); Advisers, Inc. v. Wiesen-Hart, Inc., 238 F.2d 706 (6th Cir. 1956), cert. denied, 353 U.S. 949, 77 S.Ct. 861, 1 L.Ed.2d 885 (1957). This is further evidenced by the statute itself, which contains a "savings clause," 17 U.S.C. § 21, alleviating the consequences of particular omissions, and a provision making a certificate of registration prima facie evidence of the facts stated therein, 17 U.S.C. § 209, thereby simplifying plaintiffs' burdens in many cases. See Tennessee Fabricating Co. v. Moultrie Mfg. Co., 421 F.2d 279 (5th Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1819, 26 L.Ed.2d 91 (1970).

In the present action all formalities required by the statute for possession of a valid copyright were accomplished: the notice was prominently displayed, and included all necessary information. This was sufficient to obtain protection in the first instance; the question is really whether the addition of the erroneous date worked a forfeiture of that protection. Applying the basic policy to the facts, it would appear that no forfeiture should eventuate absent the possibility of some prejudice to innocent third parties by reason of the inclusion.

The only possible reliance by any members of the public, including defendant, upon the accuracy of the notice appearing on the copyrighted rose would be for the purposes of computation of the termination date of the monopoly enjoyed under the statute. There could be no significant prejudice from misreliance upon the "1969" date, since under either date, 1967 or 1969, 23 years of monopoly presently remain, assuming no renewal, 17 U.S.C. § 24; this is alleged without contradiction to be considerably in excess of the useful life of this type of object. Also, for whatever it is worth, anyone sufficiently interested could have obtained a copy of the registration certificate, which would have displayed the proper date of publication, 17 U.S.C. § 209, see Plaintiffs' Exhibit A, or could have observed the deposited copies, which contained the proper notice. (Defendant's Exhibit 1.) Plaintiffs' copyright therefore appears valid against this challenge, notwithstanding the possible contrary inference from the dictum in Basevi, supra.

Nevertheless, assuming arguendo that the method for compliance with statutory strictures voluntarily assumed is no less rigid, and the sanctions for its violation no less inevitable by reason of the voluntariness of the inclusion, we remain of the opinion that plaintiffs' copyright must at this juncture be held to be valid and...