Geisel v. Poynter Products, Inc.

Decision Date23 December 1968
Docket NumberNo. 68 Civ. 997.,68 Civ. 997.
Citation295 F. Supp. 331
PartiesTheodor Seuss GEISEL, Plaintiff, v. POYNTER PRODUCTS, INC., Alabe Crafts, Inc., Linder, Nathan & Heide, Inc., and Liberty Library Corporation, Defendants.
CourtU.S. District Court — Southern District of New York


White & Case, New York City, for plaintiff; William D. Conwell, Laura Banfield, New York City, of counsel.

Cowan, Liebowitz & Latman, New York City, for defendants; Alan Latman, Arthur J. Greenbaum, New York City, of counsel.


HERLANDS, District Judge:

Can an artist who sells his signed cartoon to a magazine validly object to the magazine's making and selling a doll which is truthfully advertised as based upon the cartoon? This, capsulated, poses the critical issue herein.

The Complaint

Plaintiff, Theodor Seuss Geisel, is the world-famous artist and author, whose nom de plume is "Dr. Seuss." In a complaint against the four defendants, filed March 8, 1968, plaintiff charged that the defendants manufactured and were advertising and selling dolls "derived from" Complaint, ¶ 21 certain material which plaintiff "prepared for publication" Complaint, ¶ 17 for the now defunct Liberty Magazine in 1932 and which was published in that magazine from June to December 1932; that, although plaintiff had nothing to do with the design or manufacture of the dolls, they were being advertised and sold as "Dr. Seuss" creations; and that the dolls are "tasteless, unattractive and of an inferior quality" Complaint, ¶ 41; 23.

On the basis of these and other allegations, plaintiff requested compensatory and punitive damages as well as an injunction enjoining defendants from using the name "Dr. Seuss" in any manner without plaintiff's consent, or in connection with any product not designed or approved by plaintiff.

In support of this prayer for relief, plaintiff pleaded five causes of action: (1) violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1964); (2) unfair competition, including violation of Section 368-d of the New York General Business Law, McKinney's Consol.Laws, c. 20; (3) violation of plaintiff's right of privacy as provided by the New York Civil Rights Law, McKinney's Consol.Laws, c. §§ 50, 51; (4) defamation; and (5) conspiracy with intent to injure plaintiff (prima facie tort).

The Preliminary Injunction

An order to show cause for a preliminary injunction was signed on March 8, 1968. On March 12, this Court heard argument on that motion, issued a temporary restraining order (which, in substance, restrained defendants from using the name "Dr. Seuss" in any manner in connection with any doll, toy or other product), and granted the parties leave to conduct discovery and to submit further papers.

On April 9, 1968, this Court concluded that there was a reasonable probability of plaintiff's success upon the trial of the Lanham Act (first) cause of action and issued a preliminary injunction restraining defendants as follows:

"The defendants, their officers, agents, servants, employees and all persons acting under their control and each of them are hereby enjoined and restrained pendente lite from committing any of the following acts in connection with the manufacturing, displaying, advertising, distributing, selling or offering for sale of any doll, toy or other similar product:
A. Representing that defendants' doll, toy or other similar product has been created, designed, produced, approved or authorized by plaintiff;
B. Describing defendants' doll, toy or other similar product as having been created, designed, produced, approved or authorized by plaintiff; or
C. Representing, describing or designating plaintiff as the originator, creator, designer, or producer of defendants' doll, toy or other similar products."

At the same time, the Court advanced the date of the trial on the merits, pursuant to Rule 65(a) (2), Fed.R.Civ.P., to April 22, 1968. (See 283 F.Supp. 261, 268.)

Defendants' Basic Contentions

It would be useful to summarize defendants' basic contentions, as formulated in the pre-trial order. Defendants claim that they have the right to manufacture and sell the dolls in question for the reason that either (1) defendant Liberty Library Corporation—as successor-assignee of Liberty Magazine—owns complete rights, including copyright, in the cartoons published in 1932, and "the owner of copyright in cartoons has the exclusive right to make three-dimensional figures therefrom," or (2) the cartoons are in the public domain and, therefore, "anyone may use such cartoons as the basis for the three-dimensional figures." Defendants contend that the dolls are specifically "based on" Plaintiff's Exhibits 14A, 14B and 14C.

In addition, defendants argue that they have the right to state truthfully the relationship between plaintiff-cartoonist and the dolls, including the circumstance that the dolls were "based on, adapted from or inspired by" the plaintiff's Liberty Magazine cartoons. Finally, defendants have urged a variety of other defenses to the causes of action set forth in the complaint P.T.O. 4 (pp. 13-14).

This opinion contains the findings of fact and conclusions of law required by Rule 52(a), Fed.R.Civ.P.1

Certain Undisputed Facts

Certain facts relating to the parties to this suit have been stipulated as not in dispute or are undisputed:

1. Plaintiff, Theodor Seuss Geisel (hereafter Geisel or plaintiff), is a well-known author and illustrator and a resident of La Jolla, California.

2. Defendant, Poynter Products Inc. (hereafter Poynter), is an Ohio corporation having its principal place of business at 7 Arcadia Place, Cincinnati, Ohio; it is engaged in the business of producing and selling toys and novelties. Its president and sole stockholder is Donald B. Poynter.

3. Defendant, Alabe Crafts, Inc. (hereafter Alabe), is an Ohio corporation having its principal place of business at 1632 Gest Street in Cincinnati, Ohio; it distributes, among other things, the products of Poynter Products Inc.

4. Defendant, Liberty Library Corporation (hereafter Liberty), is a New York corporation with its principal place of business at 353 West 57th Street, New York, New York. Its president is Miss Lorraine Lester (Mrs. George Lessner). Its vice-president and treasurer is George Lessner. Its executive administrator is Robert Whiteman. The stock of Liberty is completely owned by Mr. and Mrs. Lessner.

5. Defendant, Linder, Nathan & Heide, Inc. (hereafter Linder), is a New York corporation having its principal place of business at 200 Fifth Avenue, New York, New York. It is engaged in selling toys and novelties to retailers; it acts as manufacturers' representative in New York City for defendant Alabe and others.

There is diversity of citizenship between the parties. The matter in controversy, exclusive of interest and costs, exceeds the sum of $10,000. It is not, therefore, necessary to decide whether there is an independent basis of jurisdiction.

The 1932 Agreement

At the trial, a substantial amount of the evidence concerned the nature of the 1932 agreement between plaintiff and Liberty Publishing Corporation (hereafter Liberty Magazine). Plaintiff contends that the evidence proves that plaintiff assigned to Liberty Magazine the title to the cartoons with their accompanying text

"* * * with the understanding that Liberty would copyright this work as part of the entire issue of the magazines in which they appeared. It was understood, however, that while Liberty had the complete rights to publish these works in one issue of Liberty Magazine, Liberty held all other rights to this work (including the right to renew the copyright and the right to make other uses of the work) in trust for plaintiff." P.T.O. 3 (p. 12).

Plaintiff presents this contention as an additional reason why he is entitled to the relief prayed for in the complaint.

On the other hand, defendants contend that the 1932 agreement provided for the transfer to Liberty Magazine of all or complete rights in the cartoons and accompanying text without reservation of any rights in plaintiff.

Certain facts relating to the 1932 transaction have been stipulated as not in dispute. The parties agree that, in 1932, plaintiff "* * * prepared and sold to Liberty Magazine material which was published in weekly issues of Liberty Magazine during the months of June through December 1932" (P.T.O. Stip. 22); that the material consisted of a series of twenty-three "cartoon essays" and that "each work consisted of a page which contained at least three cartoons and each cartoon contained several animal creations" (P.T.O.Stip. 23, 25); that the material appeared in Liberty Magazine under the following titles: "Goofy Olympics," "Some Recent Developments in Zoology," "A Few Notes on Birds," "A Few Notes on the Coming Elections," "A New Idea in Taxation," "The Summer Problem and How to Solve Them," "A Few Notes on Torture," "Some Recent Inventions in the Offspring Field," "Educational Projects," "A Few Bright Spots on the Business Horizon," "Three Glorious Movements in the Clothing Field," "A Few Notes on Games," "The Rough Road to International Harmony," "House Cleaning the English Language," "A Few Hints on Hypnotism," "Some New Aids to Better Living," "A Few Notes on Origins," "A Few Notes on Fires," "A Few Hints on Navigation," "Is the Bird in Hand Really Worth Two in the Bush, Part I," "Is the Bird in Hand Really Worth Two in the Bush, Part II," "A Few Notes on Facial Foliage," "A Few Notes on Sleep." (P.T.O.Stip. 24); and that plaintiff received $300 for each work (P.T.O.Stip. 25). (Photostatic copies of the pages of Liberty Magazine upon which the "cartoon essays" appeared were admitted into evidence as Pltf. Exhibits 14A-W.)

There is also no dispute that the issues of Liberty Magazine in which the cartoons appeared were copyrighted by Liberty Magazine as entire issues (P. T.O.Stip. 23). Each issue contained the required notice of...

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