Higgins v. Baker

• Decision Date: 26 January 1970
• Docket Number: No. 68 Civ. 793.,68 Civ. 793.
• Parties: Mary Boyd HIGGINS, as Trustee of the Wilhelm Reich Infant Trust Fund, Plaintiff, v. Elsworth F. BAKER, M.D., and Crowell Collier & Macmillan, Inc. d/b/a the Macmillan Company, New York, Defendants.
• Court: U.S. District Court — Southern District of New York

309 F. Supp. 635

Mary Boyd HIGGINS, as Trustee of the Wilhelm Reich Infant Trust Fund, Plaintiff, v. Elsworth F. BAKER, M.D., and Crowell Collier & Macmillan, Inc. d/b/a the Macmillan Company, New York, Defendants.

No. 68 Civ. 793.

United States District Court, S. D. New York.

October 30, 1969.

Memorandum on Motion for Reargument January 26, 1970.

Leonard Kolleeny, New York City, for plaintiff.

Linden & Deutsch, New York City, for defendants; David Blasband, New York City, of counsel.

MEMORANDUM

TENNEY, District Judge.

Plaintiff, trustee of the Wilhelm Reich Infant Trust Fund, by verified complaint dated February 26, 1968 seeks, inter alia, a permanent injunction and money damages pursuant to 28 U.S. C. § 1338 because of defendants' alleged infringement of certain copyrights held by plaintiff in her capacity as trustee. Plaintiff claims that defendant Dr. Elsworth F. Baker, a former student and close associate of the late Dr. Wilhelm Reich, and the two defendant publishing companies, have committed literary larceny by publishing Dr. Baker's book, "Man In The Trap", which infringed copyrights on numerous books and writings published by Dr. Reich.

Defendants contend that the alleged similarity between "Man In The Trap" and Dr. Reich's works is insubstantial and, further, that any reproduction of Reich's works appearing in Dr. Baker's book is defensible as "fair use". Based upon these contentions and a claim that plaintiff has commenced this action with "unclean hands", defendants move pursuant to Fed.R.Civ.P. 56 for summary judgment.

Recent decisions in this circuit have determined the issue of "fair use" on motions for summary judgment. Time Inc. v. Bernard Geis Associates, 293 F.Supp. 130 (S.D.N.Y. 1968); see Berlin v. E. C. Publications, Inc., 329 F. 2d 541, 9 A.L.R.3d 612 (2d Cir.), cert. denied, 379 U.S. 822, 85 S.Ct. 46, 13 L. Ed.2d 33 (1964). However, such determination should only be made when the facts are fully exposed without dispute and both parties seek summary judgment. Time Inc. v. Bernard Geis Associates, supra 293 F.Supp. at 144. In the instant suit, unlike the situation presented in the Time case, there is little agreement as to the facts and only defendants seek summary judgment. Plaintiff, in her 9(g) statement, required by the General Rules of this Court, specifically contends that there exist material issues of fact as to, inter alia, the intended use to be made of Dr. Reich's books, the accuracy of defendant Baker's computations as to the quantity of copying, and the present use made of Dr. Baker's book.

While many of the cases cited by defendants in their memorandum of law in support of this motion may support a finding that the alleged reproduction of Dr. Reich's works in "Man In The Trap" constitutes "fair use", it would be premature to determine this issue before trial. Professor Nimmer, in his treatise on the law of copyright, suggests that the issue of "fair use" presents questions of fact and thus should not be determined on a motion for summary judgment. M. Nimmer, Nimmer on Copyright § 138, at 600 (1969). Judge Murphy of this court has ruled in consonance with this sound view in Consumers Union of United States, Inc. v. Hobart Mfg. Co., 199 F.Supp. 860, 861 (S. D.N.Y. 1961); accord, Winwar v. Time Inc., 83 F.Supp. 629 (S.D.N.Y.1949); New York Tribune, Inc. v. Otis & Co., 39 F.Supp. 67 (S.D.N.Y.1941).

Although the issue of "insubstantial similarity" is often determined on a motion for summary judgment, see Nimmer on Copyright, supra § 138 at 599, I find many underlying issues of fact which prevent me from doing so herein. Even assuming the accuracy of defendants' computations which indicate that only .8 per cent of Reich's works were copied, this does not conclusively establish the insubstantiality of the copying. Similar material, however small in quantity, may still be deemed substantial if qualitatively important, Nimmer on Copyright, supra § 143.12 at 629, and the determination of the copied material's qualitative importance is an issue of fact that can best be determined at trial. See Fristot v. First American Natural Ferns Co., 251 F.Supp. 886 (S. D.N.Y.1966); Malkin v. Dubinsky, 146 F.Supp. 111 (S.D.N.Y.1956). Additionally, I cannot rule as a matter of law that simply because the material allegedly copied is of a scientific nature it was permissible for defendants to convert it to their own use without plaintiff's consent. Trial by affidavit is an inappropriate method of determining whether defendants were justified in copying Reich's works simply because the works of both doctors are scientifically similar. Both the Court of Appeals for this circuit and professor Nimmer have suggested that it is unwise to grant summary judgment in copyright infringement actions when there is any doubt as to the facts. See Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946); Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661 (2d Cir. 1939); Nimmer on Copyright, supra § 138 at 599.

Research discloses no persuasive authority wherein summary judgment has been granted to a defendant in a copyright infringement case based solely upon the alleged "unclean hands" of the complainant. Even when such doctrine has been sustained as a defense to an infringement action, it was proved that complainant's conduct consisted, inter alia, of either falsifying a court order or misrepresenting to the court the nature and extent of his copyright. See Nimmer on Copyright, supra § 149.2 at 664. The alleged transgressions of plaintiff herein are not sufficiently serious to sustain defendants' motion for summary judgment.

Accordingly, and for the foregoing reasons, defendants' motion for summary judgment is denied.

So ordered.

MEMORANDUM ON MOTION FOR REARGUMENT

TENNEY, District Judge.

Defendants, contending that certain matters and controlling decisions were overlooked by the Court in a prior disposition of this motion, move pursuant to Rule 9(m) of the General Rules of this Court for reargument of their previously denied motion for summary judgment. The facts, having been fully set forth in my previous decision, will not be repeated herein.

The thrust of defendants' reargument is that the material allegedly infringed was not copyrightable. More specifically, it is urged that since the material allegedly copied is restrictive in nature and only capable of a very limited manner of expression, it is not subject to copyright protection.

Admittedly, copyright protection does not attach to factual material expressible only in a limited manner. M. Nimmer, Nimmer on Copyright § 29.2, at 129 (1969). This is because the subject matter of the material would be appropriated if its expression were allowed to be copyrighted. That is, if such circumscribed material were protected by copyright, a monopoly would result on the expression of an idea or fact, and our copyright laws do not envision the private appropriation of such narrow subject matter. Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967); Consumers Union of United States, Inc. v. Hobart Mfg. Co., 199 F. Supp. 860 (S.D.N.Y.1961); Ricker v. General Elec. Co., 68 U.S.P.Q. 371 (S.D. N.Y.1946), aff'd 162 F.2d 141 (2d Cir. 1947).

Further, it is often proper (as it was in the above-cited cases) to determine whether as a matter of law, the writings allegedly infringed are protected by copyright. In the instant suit, however, no such determination can be made since a threshold issue of fact must be resolved; that is, whether the writings, allegedly infringed, admitted of only a limited manner of expression. It should be noted here that the Court does not suggest departure from the well-rooted principle that the issue of copyrightability is one of law, but rather submits that the present posture of the instant suit precludes determination of this issue since it must initially be determined whether the material allegedly infringed was in fact subject to severely limited means of expression. As the latter issue is one of fact, it may not be determined on a motion for summary judgment.

The above-cited cases are distinguishable in that issues of fact did not underlie the determination of copyrightability. In Morrissey v. Procter & Gamble Co., supra, the Court compared two simple sets of contest rules and determined that copyright protection could not attach to the allegedly infringed rules as they were patently capable of only a limited means of expression. In Consumers Union of United States, Inc. v. Hobart Mfg. Co., supra 199 F.Supp. at 861, the sales bulletin which was copied had no original form and was "quite pedestrian with no independent creative stature." This can hardly be said of the books allegedly infringed in this action. In Ricker v. General Elec. Co., supra 162 F.2d at 143, the Court found that "proof of copying was actually nonexistent". The similarity was apparently coincidental and merely reflected different approaches to identical scientific facts.

In the instant suit, w...