Louis Dejonge & Co. v. Breuker & Kessler Co.

• Decision Date: 02 October 1910
• Docket Number: 1906.,1,October Sessions
• Citation: 182 F. 150
• Court: U.S. District Court — Eastern District of Pennsylvania
• Parties: LOUIS DE JONGE & CO. v. BREUKER & KESSLER CO.

182 F. 150

LOUIS DE JONGE & CO. v. BREUKER & KESSLER CO.

No. 1, October Sessions, 1906.

United States Circuit Court, E.D. Pennsylvania.

October 2, 1910

C. P Goepel and S.D. Cozzens, for complainants.

Frank S. Busser and G. J. Harding, for defendant.

J. B McPHERSON, District Judge.

This suit concerns the copyright upon a painting. The dispute arose before the passage of Act March 4, 1909, c. 320, 35 Stat. 1075 (U.S. Comp. St. Supp. 1909, p.

1289) and is to be decided under the statutes previously in force. The facts are not in controversy and may be stated as follows:

In September, 1905, the plaintiff copyrighted a small painting in water colors, describing it in these words:

'Holly, Mistletoe, and Spruce. The painting consists of the representation of small branches or sprigs of the flowers of holly, mistletoe, and spruce arranged in the form of an open cluster, the cluster having substantially the outline of a square.'

For present purposes infringement may be assumed. The principal defense is that the painting was not the subject of copyright at all, but should have been patented under section 4929 of the Revised Statutes (U.S. Comp. St. 1901, p. 3398), as a design for an article of manufacture. In my opinion the testimony does not sustain this defense. Whatever force the argument may possess, where a painting is obviously a mere design and can be nothing else, it is not persuasive where the painting may with equal propriety belong either to the fine or to the useful arts. It clearly appears that the painting now in question is artistic in thought and execution, and it was therefore entitled to protection by a copyright, if a copyright was desired. It appears just as clearly that neither the artist nor his patron intended to reproduce the painting as such a work of art is ordinarily reproduced, but intended to multiply it as a design for a fancy paper to cover boxes and other articles for the holiday season. Nevertheless, when the painting left the artist's hand, it was of such a character as made it eligible either for copyright or for patenting, at the option of the author or owner. As it seems to me, Act June 18, 1874, c. 301, 18 Stat. 78 (U.S. Comp. St. 1901, p. 3411), did not forbid it to be copyrighted. A reproduction would certainly not be a 'label,' and, while no doubt it might be a 'print,' and might with propriety be regarded as 'designed to be used for (an) article of manufacture,' it could with equal propriety be described as a 'pictorial illustration or work connected with the fine arts'-- quite as accurately as the circus posters that were thus classified in Bleistein v. Donaldson, etc., Co., 188 U.S. 239, 23 Sup.Ct. 298, 47 L.Ed. 460-- and therefore it could not be definitely assigned for the present purpose either to the fine or to the useful arts, until the author or the owner decided under which statute he would protect his property.

It is, I think, difficult to see how a painting that may be either copyrighted or patented can be said to be 'designed' for one rather than for the other form of protection until the author or owner makes his final choice. Up to that time he may do what he pleases with his property. If he chooses to copyright it as a work of art, he may do so; if he prefers to patent it as a design, he is free to do this also; and the mere fact that he originally intended to take one of these courses rather than the other does not prevent him from changing his purpose at the last moment. His state of mind upon this matter has nothing to do with the quality of the painting; and it is this quality, and not the intention of the author or owner, that determines what protection may be given to the artist's work.

In the present instance the artist was commissioned to produce a design for the useful arts; in executing the commission, he produced a painting of artistic excellence, original and pleasing, merely regarded by itself as a picture, and also original and ornamental as a design; and with such a work in his possession the owner or author might treat and protect it in either of its aspects. Since it was qualified for admission into the two statutory classes, I see no reason why it might not be placed in either. But it could not enter both. The method of procedure, the term of protection, and the penalties for infringement, are so different that the author or owner of a painting that is eligible for both classes must decide to which region of intellectual effort the work is to be assigned, and he must abide by the decision. Ordinarily, of course, there is no difficulty. Not many paintings are suitable for use as designs, and only a few designs possess the qualities demanded by the fine arts. But it is easily conceivable that here and there a painting may be eligible for either class, and the water color in question is, I think, an excellent example. Such a work may be used in both the fine and the useful arts; but it can have protection in only one of these classes. The author or owner is driven to his election, and must stand by his choice.

The precise question is apparently of first impression. None of the cases that I have examined seems to decide it, as a brief review may make clear. Scoville v. Toland (1848) Fed. Cas. No. 12,553, merely decided that a label asserting the excellence of a medicine and intended to be affixed to a bottle was not a 'book,' and was not the subject of a copyright. This ruling was cited with approval in Higgins v. Keuffel, 140 U.S. 428, 11 Sup.Ct. 731, 35 L.Ed. 470. In Rosenbach v. Dreyfuss (D.C., 1880) 2 F. 217, the articles in question were 'prints of balloons and hanging baskets, with printing on them for embroidery, and cutting lines showing how the paper may be cut and joined to make the different parts fit together, and not intended as a mere pictorial representation of something'; and it was held that they were not copyrightable. The act of 1874 was considered, and the articles were decided not to be 'pictorial illustrations or works connected with the fine arts,' but 'prints or labels designed to be used for other articles of manufacture.' This being so, they did not belong to the fine arts, and could not be copyrighted, although they might be patented under section 4929 of the Revised Statutes. As the syllabus correctly states, Ehret v. Pierce (C.C., 1880) 10 F. 553, decided only that:

'An advertising card devised for the purpose of displaying paints of various colors, consisting of a sheet of paper having attached thereto square bits of paper painted in various colors, each square having a different color, with some lithographic work surrounding the squares advertising the sale of the colors, is not the subject of a copyright'

-- there being no artistic quality in the device. In Yuengling v. Schile (C.C., 1882) 12 F. 97, it was held that copies of a chromo lithograph entitled 'Gambrinus and His Followers' were protected by copyright, although they were intended, used, and circulated as a gratuitous advertisement for the benefit of the plaintiff's private business as a brewer, and not for the instruction or improvement of the public. The picture was not a design in any sense; it was reproduced separately in the usual manner. In the course of the opinion Judge Brown said (page 100) 'The plaintiff's chromo in the...