Past Pluto Productions Corp. v. Dana

• Decision Date: 10 February 1986
• Docket Number: No. 85 Civ. 5400 (PKL).,85 Civ. 5400 (PKL).
• Citation: 627 F. Supp. 1435
• Parties: PAST PLUTO PRODUCTIONS CORP., Plaintiff, v. David A. DANA and Dana International, Defendants.
• Court: U.S. District Court — Southern District of New York

627 F. Supp. 1435

PAST PLUTO PRODUCTIONS CORP., Plaintiff, v. David A. DANA and Dana International, Defendants.

No. 85 Civ. 5400 (PKL).

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

February 10, 1986.

COPYRIGHT MATERIAL OMITTED

Mandeville & Schweitzer, New York City, Michael A. Cornman, and Andrew S. Langsam, of counsel, for plaintiff.

Richard E. Bennett, New York City, for defendants.

LEISURE, District Judge:

As the nation prepares to celebrate both the centennial and restoration of the Statue of Liberty, it is hardly surprising that numerous entrepreneurs are seeking to profit from the manufacture and sale of Statue of Liberty memorabilia. Many of these items may be fairly characterized as novelty items, inexpensively made and inexpensively sold. The current dispute arises because one such entrepreneur secured a copyright for the novelty item it had created—a flat foam hat—and now seeks to enjoin another entrepreneur from making and selling its own Statue of Liberty foam hat. This case is before me as an action for injunctive relief and damages for alleged copyright infringement. The Court has subject matter jurisdiction under 28 U.S.C. § 1338(a).

Plaintiff seeks both a preliminary and permanent injunction. During the hearing on plaintiff's application for a preliminary injunction, the parties agreed and the Court ordered that the hearing be consolidated with a trial on the merits, pursuant to Fed.R.Civ.P. 65(a)(2). See Abraham Zion Corp. v. Lebow, 761 F.2d 93, 100-02 (2d Cir.1985).

For the reasons set forth below, in findings of fact and conclusions of law made pursuant to Fed.R.Civ.P. 52(a), the Court finds for the defendant and orders the complaint dismissed.

FINDINGS OF FACT

1. Plaintiff Past Pluto Productions Corp. ("Past Pluto") is a New York corporation in the business of selling novelty hats shaped to resemble the crown of the Statue of Liberty. Past Pluto is the employer for hire of Elizabeth Tyre ("Tyre"), the designer of the "Crown of Liberty," the hat sold by Past Pluto.

2. Defendant David A. Dana ("Dana") is an individual doing business in the State of New York as the defendant Dana International. In the past, Dana has sold his own line of glassware items through Dana International. At the time of defendants' alleged infringement, however, the business efforts of Dana and Dana International were devoted primarily to the manufacture and sale of Dana's "Liberty Lid," a foam novelty hat shaped to resemble the crown of the Statue of Liberty.

3. Plaintiff's Crown of Liberty is a soft planar sculpture, approximately three-eighths of an inch thick, made of plastic foam. A hole cut in the foam permits the purchaser to wear the Crown of Liberty as a hat. Seven identical, evenly spaced foam spikes radiate from the hat's arcuate perimeter. Under the spikes, the hat is decorated with a silk-screen design—a series of solid window-like silhouettes with the words "STATUE OF LIBERTY 1886-1986" appearing above the windows. A copyright notice, "© 1984 Past Pluto Productions N.Y.C. PAT PEND," is silk-screened on the base of the hat.

4. Plaintiff's Crown of Liberty was inspired by and derived from the crown of the actual Statue of Liberty. As is well known, the Statue of Liberty is a memorial to independence given by France to America. The actual statue, including its pedestal, rises more than 300 feet above New York Harbor. Completed in Paris in 1884 by the sculptor Frederic Auguste Bartholdi,¹ it was unveiled in America in 1886. In 1986, the year of the statue's centennial, public interest in this great monument has been revived, heightened in no small part by a nation-wide fundraising drive devoted to the statue's restoration.

5. The crown of the Statue of Liberty is a three-dimensional, copper-coated, iron framework sculpture. Large vertical windows are disposed in the crown. Above the windows seven spikes, non-uniform in size and shape, radiate from the crown.

6. Plaintiff's mass-produced Crown of Liberty² is intended to bear a noticeable, albeit superficial resemblance to the crown of the Statue of Liberty. For example, plaintiff's hat is green, resembling the weathered copper surface of the actual statue. The silk-screen design on plaintiff's hat is a flat pictorial representation of the windows on the crown of the Statue of Liberty. In addition, when worn on the head, the front of the Crown of Liberty flips up, creating an effect somewhat similar to that created by the raised spikes of the Statue of Liberty.

7. On December 31, 1984, plaintiff registered its Crown of Liberty design with the United States Copyright Office and received Registration Number VA-175-451. The copyright registration identified plaintiff's work as a "soft sculpture." On its registration form, however, plaintiff made no mention of the fact that its "soft sculpture" was based on the Statue of Liberty. Specifically, plaintiff did not enter any information on section 6 of the form, which is supposed to be completed if the work being registered is a derivative work.

8. In or prior to June of 1985, plaintiff sold defendant Dana 500 Crowns of Liberty on consignment. Dana sold approximately 150 of those hats, for which he paid plaintiff, and returned the unsold balance.³ Subsequent to that consignment, Dana entered into negotiations with plaintiff for the purchase of 5,000 of plaintiff's hats for resale. This transaction was never consummated, however, because Dana balked at Tyre's attempt to raise her sales price 2¢ over the figure (70¢ per hat) that she had originally mentioned.

9. Dana responded to the dissolution of his brief business relationship with Tyre by deciding to make his own version of a Statue of Liberty foam hat. Dana then proceeded to draw a rough sketch of the hat he intended to make—a seven-spiked crown with a head size of six inches. At trial, Dana testified under oath that this sketch was based on his own independent research on the Statue of Liberty. Specifically, Dana testified that he had researched his subject in the public library, reading several books on the Statue and some biographical data on the sculptor Bartholdi. Dana also testified that he had studied some post-card photos of the Statue. See Transcript of July 30, 1985 Hearing at 16. Although the Court does not question Dana's veracity regarding what he read or studied, any suggestion that Dana's rudimentary sketch was crafted without any reference to his recollection of plaintiff's hat is rejected as not credible.

10. Having finished his sketch, Dana contacted foammakers throughout the New York City area to get price quotes and to see if it was economically feasible to start making and selling foam hats. Dana met with Richard Slone ("Slone"), of Urethane Products, Inc., who was in fact already making Crown of Liberty hats for plaintiff. Subsequently, Dana paid Slone $225 to make a die corresponding to Dana's sketch which could be used for the future production of foam hats. Slone also agreed to supply Dana with urethane foam and make the hats. Eventually, however, Slone told Dana that he would only supply Dana with yellow or gray foam, since he was already making a green hat for plaintiff. Dana refused, telling Slone that his customers would expect and want Dana's hat to be green, the same color as the oxidized copper surface of the actual Statue of Liberty.

11. Taking the die he had bought from Slone, Dana sought foam from other suppliers, eventually reaching an agreement with Barney Weiss ("Weiss") of Durafoam Company. At the suggestion of Weiss, Dana hired M. Daniel Leo ("Leo"), a professional artist and silkscreener, to do the artwork for the crown's design. According to Leo's sworn affidavit, which this Court finds credible in all material respects, he was asked to make a drawing based on the crown of the Statue of Liberty. Leo was told that his artwork would be screened on a novelty foam hat, and was in fact shown a blank cutout of a crown made from Dana's die. At no point was Leo shown Past Pluto's Crown of Liberty. Rather, he based his own artwork on a photocopy from a magazine advertisement which contained an artist's rendering of the Statue of Liberty. Then, using Dana's foam cutout, Leo drew a design not entirely dissimilar to plaintiff's hat, which Leo had never seen. Beneath the spikes, Leo drew dark window-like rectangles in an arced formation, rounding off the tops of the windows to create a domed effect. The windows at either end of the crown were given bulged domes. In general, Leo applied basic techniques of perspective to his drawing; for example, he drew a line above the tops of the windows in order "to show where the parts of the crown begin and to give the illusion of depth to the windows." Affidavit of Daniel Leo in Opposition to Motion for Preliminary Injunction ¶ 7 at 2 ("Leo Affidavit").

12. Dana specifically directed Leo to include the word "LIBERTY" and the dates "1886" and "1986," respectively, on the artwork. Leo complied with Dana's request by placing "1886 LIBERTY 1986" in a curved line beneath the windows, surrounded in either side by three stars.

13. Leo's artwork has been adopted by Dana and has appeared on all versions of Dana's Liberty Lid. Dana began selling his Liberty Lids in late June or early July of 1985. Dana has made two versions of the Liberty Lid. The first version, which Dana discontinued after selling about 1200 hats, is circular on the bottom (like plaintiff's hat) and has its seven spikes spread out in a formation that is similar, though not identical, to plaintiff's hat. In contrast, the second version of Dana's has a flattened bottom (apparently to make the hat easier to wear) and its spikes are shifted upward.

14. On July 18, 1985, the U.S. Copyright Office issued a certificate of copyright registration for Dana's Liberty Lid. Dana received Registration Number VA-193-820. In his registration form, Dana described the nature of his work as a "silkscreen soft sculpture." Dana...