FW Woolworth Co. v. Contemporary Arts

• Decision Date: 26 December 1951
• Docket Number: No. 4584.,4584.
• Citation: 193 F.2d 162
• Parties: F. W. WOOLWORTH CO. v. CONTEMPORARY ARTS, Inc.
• Court: U.S. Court of Appeals — First Circuit

193 F.2d 162 (1951)

F. W. WOOLWORTH CO. v.CONTEMPORARY ARTS, Inc.

No. 4584.

United States Court of Appeals First Circuit.

December 26, 1951.

Kenneth W. Greenawalt, New York City, (Clarence A. Barnes, Boston, Mass., Martin A. Schenck, New York City, Barnes, Makrauer & Smerdon, Boston, Mass., and Davies, Hardy, Schenck & Soons, New York City, on brief), for appellant.

Cedric W. Porter, Boston, Mass., (Harry F. R. Dolan and Heard, Smith, Porter & Chittick, all of Boston, Mass., on brief), for appellee.

WOODBURY, Circuit Judge.

This is an appeal from a judgment for the plaintiff in a suit for infringement of copyright.

In 1942Elizabeth Philbrick, now Mrs. Glenn C. Hall, using the professional name of "Jan Allen," applied for and received a certificate of copyright registration for a sculptured work of art entitled "Cocker-spaniel in show position."The certificate gives the date of publication as March 26, 1942; the date when copies were received as March 28, 1942, and the Entry as Class G pub. No. 39960.In June 1943"Jan Allen" assigned all her right, title and interest in the copyright to the plaintiff-appellee, Contemporary Arts, Inc., a Massachusetts corporation engaged in the business of manufacturing and selling small sculptured figurines of various kinds and also statuettes of many different breeds of dogs which are said to be highly authentic even to the minutest detail.Among the items in the second category it manufactured and sold, from 1942(when it had commissioned "Jan Allen" to do her work) until the date of the alleged infringement complained of herein, three models said to embody the copyrighted work, all reproductions of which bore notice of copyright in the statutory form.One of the embodiments relied upon is a buff colored plaster model about nine inches long by seven inches high which sold at retail for $4.00; another is a slightly smaller (about eight by six inch) red porcelain model which sold at retail for $9.00, and the third is a hand painted black and white porcelain model which retailed for $15.00.¹

The infringement charged was the sale at retail for $1.19 by F. W. Woolworth Co., a Pennsylvania corporation operating a nation-wide chain of stores, of ceramic models of a cocker spaniel said to be essentially the same as the copyrighted work.It appears and is not disputed that the Woolworth Co. bought 127 dozen of the accused statuettes from the Sabin Manufacturing Company, a partnership of McKeesport, Pennsylvania, in March, April and May, 1949, for $.60 apiece, and that Sabin in turn had purchased the statuettes from the manufacturer, Lepere Pottery Co., another partnership, of Zanesville, Ohio.At the outset of the trial counsel for the defendant informed the court that Sabin was openly assisting the defense since he had the real financial interest therein because of an indemnification agreement with the Woolforth Co., and that the latter, although recognizing its primary liability, if there was any, was "here simply to watch the proceedings."

The principal issue at the trial, which was hotly contested, was that of infringement.And this issue the court below resolved against the defendant.After detailed consideration it reached the ultimate conclusion that "the plaintiff's copyright has been infringed by the defendant's sale of ceramic models copied from the plaintiff's sculpture."Then, regarding an injunction as unnecessary under the circumstances, the court awarded the plaintiff $5,000 statutory damages in lieu of actual damages and profits, a $2,000 attorney's fee, and costs.

The appellant's first contention is that Contemporary Arts has wholly failed to establish any basis for a claim of copyright infringement by failing to show which, if indeed any one, of the three models it manufactured and sold was a copy of the model upon which the copyright certificate was issued.The argument is that since the three models differ from one another, only one at the most could possibly be the copyrighted dog, and the plaintiff has failed to prove which one this was.We regard this contention as without merit for the reason that it rests upon a misconception of the nature of the protection afforded a work of art by copyright.

It is the well established rule that a copyright on a work of art does not protect a subject, but only the treatment of a subject.Stephens v. Howells Sales Co., Inc., D.C.1926, 16 F.2d 805, 808.The proposition was elaborated by Mr. Justice Holmes in Bleistein v. Donaldson Lithographing Co., 1903, 188 U.S. 239, 249, 250, 23 S.Ct. 298, 299, 47 L.Ed. 460, wherein with respect to cromolithographs of a circus scene prepared for advertising purposes he said: "But even if they had been drawn from the life, that fact would not deprive them of protection.The opposite proposition would mean that a portrait by Velasquez or Whistler was common property because others might try their hand on the same face.Others are free to copy the original.They are not free to copy the copy.Blunt v. Patten, 3 Fed.Cas.No. 1,580 2 Paine 397, 400.SeeKelly v. Morris, L.R.1 Eq. 697;Morris v. Wright, L.R.5 Ch. 279.The copy is the personal reaction of an individual upon nature.Personality always contains something unique.It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man's alone.That something he may copyright * * *."Here the "something irreducible" which was "Jan Allen's" alone was certainly not a matter of subject, nor was it a matter of size or material, nor even of color, for it is well known that cocker spaniels are typically of several colors.Her "something irreducible" was shape.This does not mean stance, for show position in a dog is a standardized, stylized position which anyone is free to reproduce.It means the proportion, form, contour, configuration, and conformation, perhaps the latter in details too subtle for appreciation by anyone but a fancier, of the dog represented by the sculptured work of art.And in these respects the plaintiff's three models are exactly alike except for the elimination in the two higher priced models of undercuts, so called, which was required by the mechanical technique of casting in porcelain and other certamic clays from a plaster master model.

It appears from the undisputed testimony and the findings of the court in accordance therewith that the first step in the manufacture of statuettes such as those with which we are here concerned is to fashion a soft plasticene model, and the second is to make a plaster mold from that soft model.In removing the mold the original model is necessarily destroyed.The cavity of the plaster mold is then filled with a durable plaster, and after this hardens the plaster mold is chipped away, and in its turn destroyed, so that the hard plaster model becomes the master copy from which rubber production molds are made.These rubber molds are used in the production of the plaster copies, but they cannot be used to produce ceramic copies.The reason for this is that ceramic copies must be cast from plaster molds, and this requires some modification of the master copy because plaster molds, unlike flexible rubber molds, cannot be pulled away from undercuts.To meet the demands of production in ceramic, therefore, undercuts in the master copy are filled in and eliminated, but in doing so every effort is made to retain the original conception of the artist insofar as possible.Both plaster and porcelain copies are dried and sprayed with paint after the casting process, and the porcelain copies are given a glaze finish which is baked on at a high temperature with the result that more shrinkage occurs in them than in the plaster models.The quality of the ceramic used also seems to bear some relation to the degree of shrinkage.

It is evident from the foregoing that the elimination of undercuts from the plaintiff's two porcelain models, and also their smaller size, are merely factors of the mechanical process of reproduction in ceramics which have no appreciable significance upon the artistic conception of the work.We therefore regard the differences between the plaintiff's plaster and its ceramic reproductions in size, and in the elimination in the latter of undercuts, as inconsequential so far as the coverage of the copyright is concerned.

Thus when counsel for the plaintiff early in the trial offered samples of the three above mentioned Contemporary Arts models of cocker spaniels in show position, as, he said, "embodying the copyrights in suit," and the samples were marked as exhibits without any objection, all concerned in the trial were entirely correct in regarding, as they did from then on, the differences between the samples as without bearing on proof of copyright.Furthermore the statement made by counsel in offering the samples as exhibits, which was corroborated later by testimony, to the effect that the samples embodied the copyrighted dog is enough to establish the plaintiff's prima facie case for there is no evidence whatever, and we certainly are not going to assume without proof, that the plaintiff fraudulently substituted for its copyrighted dog other spurious ones, and fraudulently placed notices of copyright thereon.Gerlach-Barklow Co. v. Morris & Bendien, Inc., 2 Cir., 1927, 23 F.2d 159, 162.

From the foregoing discussion it is also clearly evident that from our allowing the plaintiff's three models of cocker spaniels in show position, diverse as to color, size and materials, and in inconsequentially minor ways as to shape, to stand as embodiments of the plaintiff's copyright, we are not in effect holding that the plaintiff"has a monopoly in the subject of a cocker-spaniel in show position in a sculpture or statuette," as the defendant contends.We conclude, therefore that the plaintiff has adequately established its copyright.

The findings of the court below on the issue of infringement are...