Hedeman Products Corp. v. Tap-Rite Products Corp.

• Decision Date: 17 April 1964
• Docket Number: Civ. A. No. 227-62.
• Citation: 228 F. Supp. 630
• Parties: HEDEMAN PRODUCTS CORP., Plaintiff, v. TAP-RITE PRODUCTS CORP., Defendant.
• Court: U.S. District Court — District of New Jersey

228 F. Supp. 630

HEDEMAN PRODUCTS CORP., Plaintiff, v. TAP-RITE PRODUCTS CORP., Defendant.

Civ. A. No. 227-62.

United States District Court D. New Jersey.

April 17, 1964.

COPYRIGHT MATERIAL OMITTED

Kenarik & Noonan, Newark, N. J., by John W. Noonan, Newark, N. J., and Clive H. Bramson, Oyster Bay., N. Y., for plaintiff.

Harry Phillipson, Newark, N. J., by Charles B. McGroddy, Jr., Charles W. Neill, New York City, for defendant.

WORTENDYKE, District Judge.

In this action the plaintiff seeks relief under 17 U.S.C. § 101 for alleged infringement of copyrighted portions of its merchandise catalogs by portions of catalogs of the defendant. Jurisdiction of the action is delegated to this Court by 28 U.S.C. § 1338(a).

Plaintiff's catalogs are entitled respectively "V-1 A Handbook for the Beverage Industry" and "X-1 A Handbook for the Bottler." The two catalogs contain some identical material and those pages on which such material appears are numbered the same in both; the additional pages in X-1 (the later catalog) are not alleged to have been infringed. The defendant's catalogs are numbered 958 and 960 respectively.

More specifically, plaintiff originally charged that defendant's catalogs infringed the illustrations or capacity specifications (or both) printed on the following pages of plaintiff's catalogs: pages 53-7, 53-11, 62-7, 62-8, 62-9, 62-19 and 62e-80. In my opinion, dated August 1, 1962, denying defendant's motion to dismiss the complaint, I held that the defendant's catalogs had not infringed the capacity specifications on pages 62-7, 62-8 and 62-9 of plaintiff's catalogs. At the pretrial conference, the parties stipulated that pages 53-11 and 62e-80 were not in any way infringed by defendant's catalogs. Consequently, at the time of trial, plaintiff contended that the illustrations on the following pages of both of its catalogs were infringed by illustrations on the indicated pages of defendant's catalogs:

                             Plaintiff's catalogs:             Defendant's catalogs
                              V-1     and     X-1               958     and     960
                             ---------------------             ---------------------
                      p. 53-7 (parts for Valcor valve)           p. 41
                      p. 62-8 (coiled hose)                      p. 2          p. 5
                      p. 62-9 (coiled hose)                                    p. 4
                      p. 62-9 (cut-back end of hose)                           p. 4
                      p. 62-19 (end of hose)                                   p. 5
                

At the trial, at the end of the plaintiff's case, defendant rested without offering any evidence (except a copy of each of its allegedly infringing catalogs) and moved to dismiss "for failure to prove a prima facie case" and asked leave to submit a post-trial brief. The plaintiff, on its part, moved for a directed judgment in its favor on the ground that its evidence presented a prima facie case which stood uncontroverted. The Court denied the defendant's motion and reserved decision on plaintiff's motion, pending receipt of defendant's post-trial brief; the plaintiff electing to rely on its trial brief.

The defendant conceded at the trial the originality of both plaintiff's catalogs and of the illustrations alleged to be infringed. Both catalogs were, therefore, copyrightable. The certificates of registration (both showing the same publication date and numbered A-254502 and A-252895 respectively) of plaintiff's claim to copyright of its two catalogs were admitted in evidence at the trial. These certificates constitute prima facie evidence of title, validity and the facts therein stated, 17 U.S.C. § 209; Edward B. Marks Music Corp. v. Borst Music Pub. Co., D.C.N.J.1953, 110 F. Supp. 913, 917; Addison-Wesley Publ. Co. v. Brown, D.C.N.Y.1963, 223 F.Supp. 219, 224; and their introduction into evidence shifted to the defendant the burden of going forward with evidence to overcome the prima facie case, Rohauer v. Friedman, 9 Cir. 1962, 306 F.2d 933, 935. Since the defendant offered no such evidence, I must conclude that plaintiff's two catalogs have been copyrighted, as set forth in the certificates, and that those copyrights are valid.¹

The alleged infringement by defendant is of certain identical pages (or cuts therefrom) which appear in both of plaintiff's catalogs. The later catalog, X-1, is separately copyrighted to protect new material (not alleged to have been infringed) in addition to the already-copyrighted material shown in V-1, the earlier catalog. The copyright in the later catalog X-1, in regard to the material which is repeated from the prior copyrighted catalog, serves to protect that copyrighted material without extending the duration or scope of that earlier copyright, 17 U.S.C. § 3; B. & B. Auto Supply, Inc. v. Plesser, D.C.N.Y.1962, 205 F. Supp. 36, 40; Harry Alter Co. v. A. E. Borden Co., D.C.Mass.1954, 121 F.Supp. 941, 944-945. Thus only one copyright is involved in this action, that is the initial copyright on catalog V-1, material from which is repeated in catalog X-1 and which is the only material alleged to have been infringed.

The copyright involved here was of the entire catalog, but this copyright protects each illustration, alleged to have been copied, as if each had been individually copyrighted, 17 U.S.C. § 3; Markham v. A. E. Borden Co., 1 Cir. 1953, 206 F.2d 199, 201; Unistrut Corp. v. Power, D.C.Mass.1958, 175 F.Supp. 294, 299, modified on other grounds, 1 Cir. 1960, 280 F.2d 18. There is, therefore, only one copyright which can be infringed regardless of how many illustrations from the catalog were copied by defendant, Harry Alter Co. v. A. E. Borden Co., supra, 121 F.Supp. at p. 944.

The pending motion of plaintiff for judgment presents two remaining questions, i. e., whether either or both of defendant's catalogs infringed plaintiff's copyright, and what damages should be awarded for any such infringement.

Copyright infringement is the invasion by unauthorized copying of the protected material in whole or in part, of the copyright owner's exclusive right to multiply copies of his work, 17 U.S.C. § 1; Mazer v. Stein, 1954, 347 U.S. 201, 218, 74 S.Ct. 460, 98 L.Ed. 630; T. B. Harms Co. v. Eliscu, D.C.N.Y.1964, 226 F.Supp. 337, 339. It includes the appropriation of the fruits of another's labor and skill in order to publish a rival work without expending the time and effort necessary to achieve the same result independently, Orgel v. Clark Boardman Co., 2 Cir. 1962, 301 F.2d 119, 120, cert. den. 1962, 371 U.S. 817, 83 S.Ct. 31, 9 L. Ed.2d 58; Bradbury v. Columbia Broadcasting System, Inc., 9 Cir. 1961, 287 F. 2d 478, 485, cert dismissed, 1962, 368 U. S. 801, 82 S.Ct. 19, 7 L.Ed.2d 15.

The test of copyright infringement is "* * * whether the work is recognizable by an ordinary observer as having been taken from the copyrighted source. Slight differences and variations will not serve as a defendant. The means of expressing an idea is subject to copyright protection and where one uses his own method or way of expressing his idea, * * * such adornment constitutes a protectible work." Bradbury v. Columbia Broadcasting System, Inc., supra, 287 F.2d at p. 485. See Arnstein v. Porter, 2 Cir. 1946, 154 F.2d 464, 468-469.

At the trial a portion of the deposition of defendant's president was read into the record. It disclosed his admission that he had looked at plaintiff's catalogs prior to the preparation of defendant's allegedly infringing catalogs.

The plaintiff also called, as an expert witness, a photographer of 35 years' experience, during the course of which he had had occasion to examine and compare photographs for the purpose of determining their substantial similarity. He testified that he photographed and enlarged the allegedly infringed illustrations on pages 53-7, 62-8, 62-9 and 62-19 of plaintiff's catalog. He also photographed and enlarged the six allegedly infringing illustrations from pages 2 and 41 of defendant's catalog 950 and pages 4 and 5 of catalog 960, and he made separate positive prints of each of those illustrations. From the photographs of plaintiff's illustrations, he made transparencies which he alternately superimposed upon each of the six respective positive prints of defendant's illustrations. In each instance, the lines of the superimposed transparency coincided with the corresponding lines, shading and minute detail of the positive print upon which it as superimposed. These six exhibits, each consisting of a transparent overlay on a positive print, were admitted in evidence without objection. It was the opinion of the witness that each positive print was made from a photograph of the respective illustration from which the transparency was made, and that each illustration in the defendant's catalogs, which coincided with a transparency made from the corresponding illustration in the plaintiff's catalog, indicated that the former were exact photographic copies of the latter.

The plaintiff's evidence therefore disclosed that the questioned illustrations in defendant's catalogs were almost exact, and in several cases identical, reproductions of illustrations which appeared in plaintiff's copyrighted catalog. The defendant apparently cut out the illustrations from plaintiff's catalogs and pasted them on the layout sheets used in making the defendant's catalogs. In some cases, plaintiff's illustrations were altered by being cut down in size to make them appear different from the original. The plaintiff has shown that its illustrations were copied by the defendant. Harry Alter Co. v. A. E. Borden Co., supra, 121 F.Supp. p. 944; Day-Brite Lighting, Inc. v. Sta-Brite Fluorescent Mfg. Co., 5 Cir. 1962, 308 F.2d 377, 379-380.² The absence of evidence in behalf of the defendant, other than a copy of each of its accused catalogs, impels me to the conclusion that both defendant's catalogs infringed plaintiff's copyrighted material.

At the pretrial conference, plaintiff chose to rely on 17 U.S.C. § 101 and to seek...