Marcal Paper Mills, Inc. v. Scott Paper Company

• Decision Date: 07 August 1968
• Docket Number: Civ. A. No. 31-66.
• Citation: 290 F. Supp. 43
• Parties: MARCAL PAPER MILLS, INC., Plaintiff, v. SCOTT PAPER COMPANY, Defendant.
• Court: U.S. District Court — District of New Jersey

290 F. Supp. 43

MARCAL PAPER MILLS, INC., Plaintiff, v. SCOTT PAPER COMPANY, Defendant.

Civ. A. No. 31-66.

United States District Court D. New Jersey, Civil Division.

August 7, 1968.

COPYRIGHT MATERIAL OMITTED

O'Mara, Schumann, Davis & Hession, by James Hession, Jersey City, N. J., for plaintiff; Burns, Doane, Benedict, Swecker & Mathis, J. Preston Swecker and William L. Mathis, Washington, D. C., of counsel.

Pitney, Hardin & Kipp, by Clyde A. Szuch, Newark, N. J., for defendant; Gerald P. Norton, Covington & Burling, by Roberts B. Owen, Washington, D. C., and Robert Bramson, Philadelphia, Pa., of counsel.

OPINION

COOLAHAN, District Judge:

In this multi-faceted action, plaintiff sues to enjoin defendant from continuing to package certain of its paper products while employing certain symbols, words, and trade dress which plaintiff claims it has the exclusive right to use. Damages, an accounting, and costs are also sought. The first count of the Complaint asserts that defendant has, through its employment of a specific label on certain of its facial tissues, infringed on two of plaintiff's copyrighted labels; jurisdiction of this court is said to be founded on the provisions of 17 U.S.C. § 101. The second count of the Complaint asserts that defendant's use on its toilet tissues of a design designated by plaintiff as a "floret" constitutes unfair competition, in view of plaintiff's long and continued use of the floret on its packaging. Further unfair competition is asserted to be apparent in defendant's trade dress on certain of its facial tissues. Jurisdiction of this court is said to be founded on principles of diversity and pendent jurisdiction. The third count of the Complaint asserts that defendant has, through its employment of the word "Camellia" on its facial tissues, infringed on a registered trademark which plaintiff holds for that word; jurisdiction of this court is said to be founded on the provisions of 15 U.S.C. § 1114. In addition, plaintiff claims that defendant's use of the floret design on all of its facial and toilet tissues constitutes trademark infringement. Since there is no Marcal trademark for the floret, this facet of the action is grounded on purely common-law principles; this court is said to have pendent jurisdiction. Plaintiff also claims that defendant's uses of the floret constitute a false designation of origin, and seeks relief in this court according to 15 U.S.C. § 1125. The case was brought before this court for a trial without a jury; at the end of plaintiff's presentation of its case, the court reserved decision on defendant's motion to dismiss. This opinion will constitute a resolution of that motion.

Plaintiff's claim of copyright infringement involves two "Form Kk" copyrights — copyrights for "prints or labels used for articles of merchandise," according to the Patent Office.¹ As with all copyrights, such copyrights are prima facie valid, and this court cannot now consider, at the end of the plaintiff's presentation of its case, defendant's assertion as to invalidity² or as to plaintiff's failure to secure copyright protection by the required publication of notice of copyright.³ As a result, defendant's sole hope for persuading this court that its motion to dismiss on the copyright claim should be granted is its assertion that plaintiff has not, by its presentation of evidence, established that defendant did in fact violate plaintiff's hypothetically valid copyright. It is as to this issue that the court sides with the defendant, and plaintiff's copyright claim will be dismissed.

A leading decision in the copyright area is the case of Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946). In that decision, Judge Frank outlined the basic showing a plaintiff must make to establish copyright infringement. As stated by Judge Frank, the two basic facts that a plaintiff must establish are, first, copying, and second, that the copying went so far as to constitute "improper appropriation." Evidence of copying may be of two types: a) an admission by defendant that it copied; b) circumstantial evidence. Circumstantial evidence sufficient to show copying, it was pointed out, may consist of sufficiently strong showings by the plaintiff of a combination of a) access by defendant to plaintiff's work; and b) strong similarity between the works. It is the court's view that the plaintiff's proofs in this case have failed to comply with the Arnstein v. Porter standards in every possible respect. There has been no evidence of copying. Firstly, plaintiff has presented no proof of defendant's access to plaintiff's products. If it be maintained, and such a position would not be ludicrous, that the court should take judicial notice of the fact that Scott executives are at least somewhat aware of what the competition is doing, plaintiff's proofs also fail on the second, similarity, question. The court's examination of the plaintiff's copyrighted labels and of the defendant's allegedly infringing facial tissue label⁴ convinces it that there is no similarity whatsover between the two designs. Although certain elements of the two products, such as the florets contained on both and the use of an oval design on both, bear some similarity, the two labels, viewed as a whole (and this is the only way they should be viewed in the case of this type of copyright claim),⁵ bear no similarity whatsoever. Both labels prominently display the accurate names of the manufacturer; (on all sides of the box); the Marcal name is displayed in a horizontal oval, while the Scott name is displayed in a vertical oval; manifestly, there is no similarity between the two labels. Furthermore, even were the court impressed with the fact that defendant had consciously copied the plaintiff's label, it is entirely convinced that there has been no "improper appropriation" in the present case. As stated in Hedeman Prod. Corp. v. Tap-Rite Prod. Corp., 228 F.Supp. 630, 634 (D.N.J.1964),

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 defense. 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 478 at p. 485. See Arnstein v. Porter, 2 Cir. 1946, 154 F.2d 464, 468-469.

See also Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021 (2d Cir. 1966); Williams v. Kaag Manufacturers, Inc., 338 F.2d 949 (9th Cir. 1964); Gray v. Eskimo Pie Corp., 244 F.Supp. 785 (D.Del.1965). Applying the above test, it is this court's finding that no ordinary observer would, upon an examination of the plaintiff's and defendant's labels, consider that defendant's label was taken from the copyrighted sources. The plaintiff's copyright claim will be dismissed.

Plaintiff's unfair competition count raises some very interesting legal questions. As has been adverted to earlier, plaintiff charges that defendant's use on its toilet tissues of the floret design,⁶ and its use on certain of its facial tissues, of a particular trade dress ("spaced floret symbols, color and display matter") constitutes unfair competition. To be disposed of initially is defendant's apparent assertion that the recent United States Supreme Court decisions in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964), and Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed. 2d 669 (1964), have entirely done away with the common law of unfair competition. It is the court's view that this was not the case.

The Sears and Compco decisions were based on the doctrine of preemption, the doctrine which holds that "when state law touches upon the area of * * federal statutes enacted pursuant to constitutional authority it is `familiar doctrine' that the federal policy `may not be set at naught, or its benefits denied' by the state law." Sears, supra at 229, 84 S.Ct. at 787. Applying that doctrine to the facts before it, the Supreme Court in Sears and Compco held that Illinois unfair competition law, permitting a finding of unfair competition upon a showing by plaintiff of "a likelihood of confusion," was not applicable to a defendant sued for copying an item within the ambit of the patent laws of the United States, although that particular item was not in fact patentable, due to lack of invention. The fact that state unfair competition law requiring only a showing of "a likelihood of confusion" would be in conflict with federal statute does not, however, decide what result would obtain in the case of state law which requires a stronger showing by a plaintiff, such as a showing that defendant's actions are such as to constitute a "palming off" of plaintiff's products, even assuming that state protection of plaintiff's floret in the present case, where preemption is said to be based on the Lanham Act, 15 U.S.C. §§ 1051-1127, is to be considered in the same manner as in the Sears and Compco cases where preemption of state protection for plaintiff's industrial design was based on the federal patent laws.⁷ The Supreme Court itself answered that question in both the Sears and Compco decisions. As was stated in Sears, supra at 232, 84 S.Ct. at 789:

Doubtless a State may, in appropriate circumstances, require that goods, whether patented or unpatented, be labeled or that other precautionary steps be taken to prevent customers from being misled as to the source, just as it may protect businesses in the use of their trademarks, labels, or distinctive dress in the packaging of goods so as to prevent others, by imitating such markings, from misleading purchasers as to the source of the goods.⁸

As a result, the inquiry must now necessarily turn to an examination of the law of New Jersey as far as unfair...