Pantone, Inc. v. AI Friedman, Inc.

• Decision Date: 17 December 1968
• Docket Number: No. 68 Civ. 3933.,68 Civ. 3933.
• Parties: PANTONE, INC., Plaintiff, v. A. I. FRIEDMAN, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

294 F. Supp. 545

PANTONE, INC., Plaintiff, v. A. I. FRIEDMAN, INC., Defendant.

No. 68 Civ. 3933.

United States District Court S. D. New York.

December 17, 1968.

Friedman & Goodman, Brooklyn, N. Y., for plaintiff.

Delson & Gordon, New York City, for defendant.

MANSFIELD, District Judge.

Plaintiff, the originator of a color matching system embodied in a copyrighted booklet called "Pantone Matching System," which is used by artists and printers, seeks a preliminary injunction restraining the defendant, a distributor of artists' supplies, from publishing or selling a leaflet containing a color matching system published by Para-Tone, Inc. of Illinois, together with related materials on the grounds (1) that the Para-Tone leaflet and materials infringe plaintiff's copyrighted work, and (2) that defendant's activities in the distribution of the Para-Tone leaflet and related materials constitutes unfair competition in violation of § 43(a) of the United States Trademark Act, 15 U.S.C. § 1125(a). Defendant denies infringement or unfair competition and asserts various affirmative defenses. On December 6, 1968 the Court held a hearing and took testimony of witnesses for the purpose of resolving certain factual issues. After careful review and appraisal of the evidence, and credibility of the witnesses, the motion is granted for the reasons set forth below.

Although the parties disagree as to copyrightability and infringement, the essential facts are not in dispute. It appears that the increasing use of costly colors in our ever-expanding volume of advertising media (magazines, newspapers, TV, etc.) and in commercial art has led to a demand by artists, manufacturers, designers and printers for the development of methods that will enable all segments to coordinate communications between each other with respect to color, with a view to avoiding errors and insuring understanding and faithful reproduction of shades for a specific use and medium. With this objective in mind plaintiff has invested large sums in the construction and outfitting of a color testing laboratory where it operates modern, expensive, analytical equipment to grind, test, produce, publish and reproduce colors in various forms. It has entered into written license agreements with various printing ink manufacturers, licensing its trademark color matching system and its know-how and formulas to them on certain conditions. As part of this system plaintiff created and published in 1963 a booklet called the "Pantone Matching System," of which it has sold some 200,000 copies for a total of approximately $700,000. The booklet represented the tangible result of plaintiff's efforts in the color matching field and constitutes the mainstay of its business. It consists of 72 pages, each bearing a series of bands of carefully selected colors which are arranged in a fashion or plan designed, through variation of certain basic colors, to provide an extensive range of selection derived from use of eight basic colors plus black and transparent white. Plaintiff's selection of the eight basic colors and of blends of these colors to provide a range of acceptable color values, presented in attractive gradations moving from one basic hue and its variations into another, was the product of a great deal of effort which required careful consideration of numerous artistic factors including the aesthetic attributes of each shade and its use in the commercial art field.

At the time when plaintiff's booklet was introduced to the trade there was nothing novel or original about the concept or use of color cards, color matching booklets, or other publications designed for selection or matching of colors. Many such booklets had long been on the market. Defendants, for instance, introduced into evidence some pre-existing color booklets that were substantially the same in size and shape as that created by plaintiff. (Both contain pages in the form of narrow cards held together with a swivel screw, each card imprinted with bands of colors.) Furthermore, some of the existing booklets offered color selections in a form that showed gradations of color ranging from yellow to deep blue. Plaintiff, however, contends that its arrangement and mode of expression of its color matching system is unique and original, and had never before to plaintiff's knowledge been presented in the form found in plaintiff's copyrighted booklet. Plaintiff's booklet, unlike any of the others shown to the Court, presents the color system in the following fashion: On each page of the booklet there appears a band of a single basic color or mixture of two basic colors (e. g., yellow, or yellow mixed with warm red). Variations in shade from this basic color or mixture, developed through formulas of the color or mixture which add black and white, are then shown as shades or tints on each side of the basic color or mixture of colors, together with the formulas for duplicating them, and Pantone's serial number. The resulting booklet offers a series of over 500 gradual shade variations, each keyed to a basic color or mixture of basic colors. Since color reproduction depends greatly on the type of paper surface to which a given color is applied, the booklet is divided into two sections, one showing the colors on coated paper, and the other on uncoated paper.

In order to be copyrightable plaintiff's work need not be strikingly unique or novel as long as its contribution is more than a trivial variation. Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99 (2d Cir. 1951) (per Frank, C. J.); Ketcham v. New York World's Fair 1939, 34 F.Supp. 657 (E.D.N.Y. 1940), affd., 119 F.2d 422 (2d Cir. 1941) (color plan for 1939 World's Fair).

"`Original' in reference to a copyrighted work means that the particular work `owes its origin' to the `author.' No large measure of novelty is necessary. Said the Supreme Court in Baker v. Selden, 101 U.S. 99, 102-103, 25 L.Ed. 841: `The copyright of the book, if not pirated from other works, would be valid without regard to the novelty, or want of novelty, of its subject-matter. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public.'

* * * * * *

"It is clear, then, that nothing in the Constitution commends that copyrighted matter be strikingly unique or novel. Accordingly, we were not ignoring the Constitution when we stated that a `copy of something in the public domain' will support a copyright if it is a `distinguishable variation'; or when we rejected the contention that `like a patent, a copyrighted work must be not only original, but new', adding, `That is not * * * the law as is obvious in the case of maps or compendia, where later works will necessarily be anticipated.' All that is needed to satisfy both the Constitution and the statute is that the `author' contributed something more than a `merely trivial' variation, something recognizably `his own.' Originality in this context `means little more than a prohibition of actual copying.' No matter how poor artistically the `author's' addition, it is enough if it be his own. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 23 S.Ct. 298, 47 L.Ed. 460." (Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99 at 102-03)

The foregoing principles have been repeatedly affirmed in decisions holding that the test for determining copyrightability is originality (i. e., independent creation or individuality of expression) rather than novelty, and that originality of even the slightest degree, even if it amounts to no more than a re-arrangement of age-old ideas, is sufficient. Peter Pan Fabrics, Inc. v. Dixon Textile Corp., 280 F.2d 800, 802 (2d Cir. 1960), on remand, 188 F.Supp. 235 (S. D.N.Y.1960); Gelles-Widmer v. Milton Bradley Co., 313 F.2d 143, 147 (7th Cir. 1963), cert. denied, 373 U.S. 913, 83 S. Ct. 1303, 10 L.Ed.2d 414 (1963) (educational type flash cards); Scott v. WKJG, Inc., 376 F.2d 467 (7th Cir. 1967), cert. denied, 389 U.S. 832, 88 S.Ct. 101, 19 L. Ed.2d 91 (1968); Peter Pan Fabrics, Inc. v. Acadia Co., 173 F.Supp. 292 (S.D. N.Y.1959), affd., 274 F.2d 487 (2d Cir. 1959); Amplex Mfg. Co. v. A. B. C. Plastic Fabricators, Inc., 184 F.Supp. 285 (E.D.Pa.1960).

After careful examination of plaintiff's mode of expression, combination and arrangement of colors in its booklet in the light of the foregoing principles, and comparison with preexisting color charts and exhibits shown to the Court, plaintiff's booklet appears to possess sufficient originality and uniqueness in its embodiment of its mode of expression to qualify it for copyrightability. Although the mere portrayal of a series of gradations of color shades, standing alone, would present a doubtful case for copyright protection, the arrangement here possessed the already described unique quality which apparently gained ready recognition on the part of artists in a critical profession. In an article written by defendant's sales manager entitled "New Developments in the Graphic Arts", which appeared in the June 1968 issue of "Print", a trade magazine, the author acknowledged the uniqueness of plaintiff's system, stating:

"This system provides a common language between the artist and the printer. * * * Although manufacturers have sold swatch books in the past (e. g., IPI), this system is unique. * * This system bridges the gap from the artist to the printer. * * *"

The originality of plaintiff's work lay in the new arrangement employed to facilitate selection and matching of colors, which was accomplished by placing each basic color or mixture in the center of each strip or page of related colors and then placing on each side of it the lighter tints achieved from addition of transparent white and on the other side of it the...