Herbert Rosenthal Jewelry Corp. v. Grossbardt

• Decision Date: 21 December 1970
• Docket Number: Docket 34617.,No. 157,157
• Citation: 436 F.2d 315
• Parties: HERBERT ROSENTHAL JEWELRY CORP., Plaintiff-Appellee, v. Jerry J. GROSSBARDT and Stanley Schechter, Co-Partners, trading as Honora Jewelry Co., Defendants-Appellants.
• Court: U.S. Court of Appeals — Second Circuit

436 F.2d 315 (1970)

HERBERT ROSENTHAL JEWELRY CORP., Plaintiff-Appellee, v. Jerry J. GROSSBARDT and Stanley Schechter, Co-Partners, trading as Honora Jewelry Co., Defendants-Appellants.

No. 157, Docket 34617.

United States Court of Appeals, Second Circuit.

Argued October 28, 1970.

Decided December 21, 1970.

Charles Sonnenreich, New York City, for plaintiff-appellee.

Daniel A. Pollack (Pollack & Singer, Martin I. Kaminsky, Neil D. Thompson, New York City, of counsel), for defendants-appellants.

Before MOORE, FRIENDLY and ADAMS,^* Circuit Judges.

FRIENDLY, Circuit Judge:

For the second time this year the jewelry manufacturing firm of Grossbardt and Schechter is before us on a charge of infringing a copyright of Herbert Rosenthal Jewelry Corporation. On the last occasion the copied article was a jewel-encrusted turtle pin, see Herbert Rosenthal Jewelry Corp. v. Grossbardt, 428 F.2d 551 (2 Cir. 1970); this time, it is a jeweled bee. Although the animals differ, the tune remains the same.

The "Writing," Art. I, § 8, cl. 8, for which plaintiff Rosenthal claims copyright protection is a diamond encrusted object in the form of a bee mounted on metal, which is fastened with a pin. Rosenthal claims to have been selling these items of female adornment since 1962. In October 1964 defendants Grossbardt and Schechter obtained one of Rosenthal's bees, made a rubber mold from it, duplicated the bee, allegedly with inferior gems, and sold it at lower prices. When plaintiff learned that its bees were breeding in other apiaries, it retained copyright counsel, who filed a copyright registration on January 13, 1966. The application listed the date of first publication as November 10, 1964. In September 1967, plaintiff's president found a duplicate of its own jeweled bee pin made by defendants. He notified them that Rosenthal owned a copyright on the pin's design and warned them to desist under penalty of suit. Plaintiff's attorney repeated the warning a month later. Both were without effect, and this suit resulted. After depositions developed that defendants had obtained the bee from which their mold was made a month before the first publication alleged in the application for copyright registration, plaintiff obtained an amended registration giving October 15, 1962, as the first publication date. The excuse offered for this discrepancy in dates was that a young lady in plaintiff's office had erred in giving the information used in securing the initial registration. Nothing daunted, defendants continued making and selling the jeweled bees. Finding infringement, Judge Palmieri entered an interlocutory judgment granting an injunction and directing an accounting of profits and damages before a master. Because of the injunction pending the entry of final judgment, we have jurisdiction of defendant's appeal, 28 U.S.C. § 1292(a) (1).

The principal defense at the trial was lack of originality. In apparent recognition that this defense has been almost drained of meaning as applied to works of art or of artistic craftsmanship, see Nimmer on Copyright §§ 19.2 and 19.3 (1969), appellate counsel has taken a different tack. Believing a bold offense to constitute the best defense, he has assembled a forceful factual broadside against the plaintiff.

The most featured element of the defense stressed on appeal was a claim that the pin was published without the copyright notice required by § 10 and often has continued to be, and that it therefore was and is within the public domain. To show that the pin had been published without the required notice, counsel marshalled a three-pronged assessment of the evidence. He relied first on testimony by Grossbardt and Schechter that the bee they bought in October 1964 bore no copyright mark; second, on testimony of defendants' sales representative about the purchase of an unmarked Rosenthal bee in 1969 from Laykin, a California jeweler; and third, on "autoptic proference" of the mold which shows no copyright mark, combined with testimony that absence of the mark from the mold could be accomplished only by "rubber-wheeling" of the pin and that this would leave an indentation on the mold not identifiable here. But Lindeman, who designed plaintiff's pin and made the mountings, and Herbert Rosenthal, president of the plaintiff corporation, testified that from the initial production and sale of the jeweled bees they regularly imprinted on the back of a wing the letters HR within a diamond and the letter C within a circle. Laykin, who was one of plaintiff's best customers, answered interrogatories to the effect that the bee pins shipped to him in October 1962 had been so marked, and plaintiff produced photographs of the stamped pin. Defendants' case was weakened by their inability to produce the model bee and, still more so, by their refusal or inability to state where they had bought her. To meet the testimony as to a 1969 purchase of an unstamped Rosenthal bee and, if need be, to counter the possible absence of a marking on the mother bee of 1964, plaintiff relied on § 21 of the Copyright Act which provides that:

Where the copyright proprietor has sought to comply with the provisions of this title with respect to notice, the omission by accident or mistake of the prescribed notice from a particular copy or copies shall not invalidate the copyright or prevent recovery for infringement against any person who, after actual notice of the copyright, begins an undertaking to infringe it * * *.

The argument continues on other fronts. Defendants say the first application for registration, accompanied by a sketch of the bee depicting the copyright notice in an impossible position, shows that the notice had never been affixed until after plaintiff discovered their copying. Moreover, defendants assert that the publication date was fraudulently changed from November 1964 to October 1962 after plaintiff learned that defendants' copying antedated the publication date originally claimed. Plaintiff counters that this was an innocent error. We could go on with other charges and countercharges, and we are not altogether sure how we would have found the facts if that task had been ours. But Judge Palmieri saw and heard the witnesses, except Laykin, and chose to credit the plaintiff's evidence and discredit the defendants'. His findings that plaintiff's bee pins bore a copyright notice from the date of first publication, or that in any event most of them did, and that no fraud was practised on the Copyright Office, were surely not clearly erroneous. Cf. Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409, 410, 411 (2 Cir. 1970).

A more serious question, not raised in the turtle case, is whether the notice was sufficient to comply with the statute. Until 1954, the first sentence of § 19 of the Copyright Act directed that the notice "shall consist either of the word `Copyright' or the abbreviation `Copr.', accompanied by the name of the copyright proprietor * * *." The second sentence qualified this by saying that for certain objects, including works of art or their reproductions, "the notice may consist of the letter C enclosed within a circle, thus ©, accompanied by the initials, monogram, mark, or symbol of the copyright proprietor: Provided, That on some accessible portion of such copies or of the margin, back, permanent base, or pedestal, or of the substance on which such copies shall be mounted, his name shall appear." Prior to 1954, then, plaintiff's notice would not have qualified under the first sentence because it used only ©. Similarly, to the extent that the HR trademark is viewed as Rosenthal's "initials, monogram, mark, or symbol," the notice would have been inadequate under the second sentence which requires that in...