Gordon v. Weir, 8176.
| Decision Date | 19 March 1953 |
| Docket Number | No. 8176.,8176. |
| Parties | GORDON v. WEIR et al. |
| Court | U.S. District Court — Western District of Michigan |
Gregory S. Dolgorukov, Detroit, Mich., Dugald S. McDougall, Chicago, Ill., for plaintiff.
Walter Martin, Saginaw, Mich., for defendants.
This is an action for copyright infringement filed under the copyright laws of the United States, particularly the Act of July 30, 1947 and earlier laws of the United States therein codified. Title 17 U.S.C.A. § 1 et seq. Defendants filed an answer and cross-bill, denying the allegations in plaintiff's complaint and charging plaintiff with unfair trade practices and unfair competition, by maliciously and falsely circulating statements among customers of defendant Weir and trade generally that licensing and publishing certain material constitutes an infringement upon plaintiff's rights.
A trial of the issues was had and, upon the record and evidence submitted at the trial, this court makes the following
1. Some time prior to February 21, 1934 Edwin I. Gordon, plaintiff's father, created and composed an original advertisement of a dot-counting contest which portrays merchandise given as a prize in a picture made up of a large number of dots, offering to the reader a main prize or prizes consisting of merchandise and secondary prizes consisting of credit checks applicable to the purchase price of the prize merchandise. It is characterized by an illustration of the prize merchandise located prominently on such advertisement and formed from a large number of dots, with a headline invitation across the top featuring the value of the prizes offered, and a border or side margin for the advertisement consisting of enumeration of the prizes, each prize or group of prizes being separately featured in an individual border, in the form of squares, within the body of the advertisement.
2. The advertisement was first published in the Clinton Herald, a newspaper published in Clinton, Iowa, on February 21, 1934, in connection with a contest conducted by the Volckman's Furniture Store of that city, and carried a copyright notice on its face.
3. On March 5, 1934 said Edwin I. Gordon, obtained a Certificate of Copyright No. 57529, Class A5, covering this advertisement as a periodical contribution, described in the certificate as $10,000 Worth of Prizes to be Given Away Free, Volckman's Furniture Store. 300 Prizes in All. Just Count the Dots (Dotted Living Room Suite). By Edwin I. Gordon."
4. After the first publication said Edwin I. Gordon licensed manufacturers and retailers to make use of advertisements embodying the features covered by his said Copyright.
5. Plaintiff herein is engaged in the business of advertising and sales promotion. After the death of his father, Edwin I. Gordon, in connection with his own business, continued the business of licensing manufacturers and retailers in the use of the advertising material covered by said Copyright Registration No. 57529.
6. From time to time plaintiff prepared other advertisements which varied slightly from the original, created by his father and covered by Copyright Registration No. 57529, in which the drawings depicted furniture of then current styles, and added embellishments to make the advertisement more attractive and noticeable. He obtained copyright registrations on a number of such advertisements, embodying the original with such minor changes.
7. During 1948 and 1949 one A. G. Bondie of Highland Park, Michigan, doing business as Business Builders, represented plaintiff as his agent in the licensing of the contest advertisements on behalf of plaintiff. In September 1948 said Bondie contacted defendant Weir, then engaged in the operation of a furniture store in Saginaw, Michigan, under the name of Weir Furniture, and as plaintiff's agent solicited Weir to take a license to use said advertising material in a "Count the Dots" sales-promotion contest.
8. On September 14, 1948 plaintiff's agent Bondie and defendant Weir entered into a contract granting such license to defendant Weir in consideration of payment by Weir of a 5% commission on the selling price of all merchandise sold as a result of the licensed contest advertisement. In connection therewith Bondie furnished to Weir the newspaper mat necessary to permit convenient newspaper reproduction of the advertisement of plaintiff's copyrighted material and such advertisement was in due course published in the local newspapers on two occasions during the period of the contests. The advertisement substantially contained the material embodied in the original advertisement of February 21, 1934, but depicted an article of furniture conforming to current styles in furniture, and other changes included prize announcements enclosed within stars rather than squares. The changes in this advertisement were also covered by a patent but the newspaper mat thereof, delivered by Bondie to Weir, carried a notice of the original copyright issued to plaintiff's father.
9. The advertising and contest proved highly successful and resulted in sales of merchandise by Weir in the amount of $30,000.00 and, pursuant to his contract, Weir paid Bondie commissions in the sum of $1,500.00.
10. After the contest Weir approached Bondie, expressed his satisfaction with the results of the contest, suggested that he could interest other dealers, and asked whether he could undertake the promotion of such contests. Bondie told him it could be arranged, and shortly thereafter Weir called on Bondie at his home and received from Bondie the necessary material to enable Weir to promote contests and grant licenses for the copyrighted advertisements on behalf of Bondie as agent of plaintiff. Such material included the mat of the advertisement, blank dealer contracts, and sheets for recording sales, obtained from plaintiff by Bondie for use in his work as plaintiff's agent.
11. Defendant Weir did not undertake the promotion of the contests and licensing of the copyrighted advertising material as plaintiff's representative but instead, set out to exploit, for his own purpose and profit, the advantages and benefits of plaintiff's copyrighted advertising material of which he had knowledge through his own use thereof pursuant to his contract with Bondie, plaintiff's agent. He also had knowledge of the original advertisement which was registered under Copyright No. 57529, dated March 5, 1934, having admitted on the witness stand, during the trial, that he checked the records of the Copyright Office and found a record of such copyright.
12. As an instrumentality for his promotional activity defendant Weir set up a wholly owned corporation called "Weir's Sales Inc." He employed as a form of license contract a document identical, word for word, with the contract forms supplied to him by Bondie, except for the substitution of different contracting parties and figures. He did not, however, use the identical advertisement used by plaintiff, but prepared his own advertisement, copying substantially all the important features of plaintiff's advertisement covered by his Copyright No. 57529 and the later advertisement in which plaintiff made minor changes and for which defendant Weir had a newspaper mat. The changes made by Weir were only colorable and superficial.
13. The substantial identity between the advertisement prepared by defendant Weir and plaintiff's copyrighted advertisement is made clear by comparison of their respective texts, the important portions of which are set forth hereunder in parallel columns:
Copyrighted Publication WEIR'S Advertisement
----------------------- --------------------
1. $10,000 Worth of Prizes to be Over $7,500.00 Worth of Prizes to be
Given Away Free! Given Locally Free
2. Dominant feature of advertisement Dominant feature of advertisement is
is picture of living-room picture of living-room furniture outlined
furniture outlined in dots. in dots
3. Just Count the Dots! How Many Dots
4. 300 Prizes in All. More Than 240 Prizes in All
5. Prizes listed in boxes, with first Prizes listed in circles, the first three
prize consisting of living-room prizes being furniture and the remaining
furniture and subsequent prizes prizes being credit checks redeemable
consisting of credit checks redeemable as part payment for furniture
as part payment for purchases
furniture purchases
14. The first use by defendant Weir of the advertisement copied by him from plaintiff's copyrighted advertisement was in connection with a sales-promotion contest conducted by him in his own furniture store, Weir Furniture, at Saginaw, Michigan, during January, 1949, when said copied advertisement was published in the local newspapers.
The defendant, Weir, although he was the owner of Weir Furniture, denied under oath having any knowledge of the quantity of goods sold as a result of the publication of the copied advertisement in January, 1949. No information, therefore, is available to the court to determine the quantity of goods sold in response to such publication except defendant Weir's admitted quantity of goods sold as a result of the earlier publication of plaintiff's advertisement in September, 1948, which was $30,000.00 on which defendant Weir paid a commission of $1,500.00 to plaintiff's agent, Bondie.
15. At substantially the time of the publication of the copied advertisement plaintiff communicated with defendant Weir and demanded that he cease infringement of plaintiff's copyright but defendant did not heed the demand and continued to make repeated use of the copied advertisement, as hereinafter found. Defendants other than Weir were similarly notified of the claimed infringement, after...
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