Raffoler, Ltd. v. Peabody & Wright, Ltd.

• Decision Date: 08 October 1987
• Docket Number: No. CV 86-4103.,CV 86-4103.
• Citation: 671 F. Supp. 947
• Parties: RAFFOLER, LTD., Plaintiff, v. PEABODY & WRIGHT, LTD., Helen White, Inc., John Ihle and Goran Thulin, Defendants.
• Court: U.S. District Court — Eastern District of New York

671 F. Supp. 947

RAFFOLER, LTD., Plaintiff, v. PEABODY & WRIGHT, LTD., Helen White, Inc., John Ihle and Goran Thulin, Defendants.

No. CV 86-4103.

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

October 8, 1987.

COPYRIGHT MATERIAL OMITTED

Morett & Hock, P.C. by Alan S. Hock, Hempstead, N.Y., for plaintiff.

Koritz & Fuller by Bjorn Koritz, New York City, for defendants.

WEXLER, District Judge.

Plaintiff Raffoler, Ltd. ("Raffoler"), a mail order company which relies primarily upon printed advertisements to generate business, brings this action for copyright infringement against defendants Peabody and Wright, Ltd. and Helen White, Inc., other companies in the mail order industry, and against John Ihle and Goran Thulin, officers of both companies. Plaintiff's complaint alleges that, since August 1986, defendants have repeatedly violated 17 U.S.C. § 501 by substantially copying plaintiff's copyrighted advertisements. Plaintiff also asserts that defendants' publication of the infringing advertisements caused public confusion resulting in the wrongful belief that plaintiff is the source of defendants' advertised products, thereby violating § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Plaintiff also presents to this Court its state law claims of unfair competition arising out of defendants' same acts, pursuant to the principles of pendent jurisdiction.

Defendants now move to dismiss the complaint. For the reasons stated below, the motion to dismiss is denied.

Raffoler's advertisements, which are used to generate mail order sales of varied, unrelated products, make use of the same rhetorical question, "Why are we giving away ____ for only $____?" as their title, followed by the phrase "This is NOT a misprint" or "Hard to believe, but true." Information about the company, instructions, and terms of purchase are almost identical from ad to ad. The advertisements are essentially uniform in style with the same layout, variation of print styles for different parts of the ads, and ordering of its components. Plaintiff's ads vary only as to the price, description, and accompanying photo or drawing of the particular product. The ads end with a mailing address using the company name and a box number to a local address.

Defendants' purported infringing ads are entitled with the rhetorical question, "Why are we giving away/offering ____ for only $____?", followed by "This is NOT a misprint" and "Hard to believe, but true." Defendants give information about their company, their terms of and instructions for purchase, and an individualized description of the product, including a picture or sketch. Their ads end with mailing directions which include the company name and box number to a local address.

I.

Defendants Ihle and Thulin move to dismiss the complaint for insufficient service of process on them as individual parties to the suit. As a result of a pretrial conference, defendants in the instant case entered into a stipulation, so ordered by the Court and dated December 18, 1986, which included in relevant part, "Defendants hereby ... accept service of process of the summons and complaint and the order to show cause, together with supporting documents thereto." The parties are bound by the stipulation and may not contradict its terms. Perry v. Winspur, 782 F.2d 893 (10th Cir.1986); see Cech v. Moore-McCormick Lines, Inc., 294 F.2d 584 (2d Cir. 1961); see also 3 J. Moore, Moore's Federal Practice ¶ 16.19 at 16-63 (2d ed. 1985). Consequently, even if Ihle and Thulin had a meritorious contention that process was insufficiently served under Fed.R.Civ.P. 5(b), they have effectively waived their right to assert that claim by entering into the stipulation.

II.

A.

Defendants move to dismiss plaintiff's copyright infringement causes of action on the ground that they fail to state a claim as provided in 17 U.S.C. § 501, and thereby also fail to establish federal subject matter jurisdiction under 28 U.S.C. § 1338.

A court may dismiss a complaint only if it is clear that no relief could be granted under any set of facts that could be proved consistent with the allegations. Hishon v. King & Spaulding, 467 U.S. 69, 104 S.Ct. 2229, 81 L.Ed.2d 59 (1984). Furthermore, when a defendant seeks to dismiss a complaint, the Court is restricted to evaluating the legal sufficiency of the pleadings. Scheuer v. Rhodes, 416 U.S. 232, 94 S.Ct. 1683, 40 L.Ed.2d 90 (1974). The motion is addressed to the face of the pleadings and the Court may look only within the four corners of the complaint or to statements or documents attached as exhibits to or clearly incorporated by reference in the pleadings. Fed.R.Civ.P. 10(c); Goldman v. Belden, 754 F.2d 1059 (2d Cir.1984); Ryder Energy Distribution v. Merrill Lynch Commodities, Inc., 748 F.2d 774 (2d Cir. 1984). On a motion to dismiss, material allegations of the complaint, along with reasonable inferences that might be drawn in the plaintiff's favor, are taken as admitted for the purpose of deciding the motion. Gargiul v. Tompkins, 704 F.2d 661 (2d Cir.1983), vacated on other grounds, 465 U.S. 1016, 104 S.Ct. 1263, 79 L.Ed.2d 670 (1984); Murray v. City of Milford, 380 F.2d 468 (2d Cir.1967).

To prove copyright infringement under 17 U.S.C. § 501, the plaintiff must establish ownership and validity of the copyright as well as unauthorized copying by the defendant. Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 228 U.S. P.Q. 423 (2d Cir.1985); Eckes v. Card Prices Update, 736 F.2d 859, 222 U.S.P.Q. 762 (2d Cir.1984). Defendants challenge the validity of the copyright, claiming that the advertisements in question are not worthy of copyright protection because their components, e.g., the slogans, title, layout, etc. could not be individually protected. The Court rejects this contention.

Advertisements are generally capable of receiving copyright protection, provided that their material is otherwise copyrightable and falls within one of the categories of copyrightable subject matter set forth in 17 U.S.C. § 102.¹Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 894, 217 U.S.P.Q. 698 (9th Cir.1983); Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565 (2d Cir.1966); Excel Promotions Corp. v. Babylon Beacon, Inc., 207 U.S.P.Q. 616, 619 (E.D.N.Y.1979). Dissection of the material to determine its copyrightability is inappropriate; that determination must be made by an assessment of the work as a whole, not of its component parts, since there is no requirement that each part be capable of individual copyright protection. Apple Barrel Productions, Inc. v. R.D. Beard, 730 F.2d 384, 387-88, 222 U.S.P.Q. 956 (5th Cir. 1984); H.M. Kolbe Co. v. Armgus Textile Co., 315 F.2d 70, 72, 137 U.S.P.Q. 9 (2d Cir.1963); see also Baldwin Cooke Co. v. Keith Clark, Inc., 383 F.Supp. 650, 183 U.S.P.Q. 209 (N.D.Ill.), aff'd per curiam, 505 F.2d 1250 (7th Cir.1974) (planning calendar was copyrightable as an entity although components of it were not individually copyrightable). It is the original skill or labor involved in creating a work which may render it protectable by copyright even if its components are not copyrightable. M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 440 (4th Cir.1986); Apple Barrel, 730 F.2d at 388; Roy Export Co. Estab. of Vaduz v. Columbia Broadcasting System, 672 F.2d 1095, 1103 (2d Cir.), cert. denied, 459 U.S. 826, 103 S.Ct. 60, 74 L.Ed.2d 63 (1982). The original intellectual effort required for copyrightability may be manifested by the arrangement of the materials to create a whole work. M. Kramer Mfg. Co., 783 F.2d at 439; H.M. Kolbe Co., 315 F.2d at 72; see also Gordon v. Weir, 111 F.Supp. 117, 122, 97 U.S.P.Q. 387 (E.D. Mich.1953), aff'd, 216 F.2d 508, 104 U.S. P.Q. 40 (6th Cir.1954) (advertisements showing original method of expression or arrangement are copyrightable). In the instant case, plaintiff is claiming copyright protection for its advertisements in their entirety, not for the individual slogans "This is NOT a misprint" or "Hard to believe, but true," or for their repeatedly used title, posing a rhetorical question. Plaintiff's copyright claim is for any original effort and creativity used in the selection and arrangement of the parts which comprise plaintiff's ads.

Furthermore, it is the mode of expression of Raffoler's sales message that is being afforded copyright protection, not the content of the message itself. What is copyrightable about a work is not its idea, but the tangible expression of that idea. Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 95, 194 U.S.P.Q. 401 (2d Cir.1977), cert. denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978); Reyher v. Children's Television Workshop, 533 F.2d 87, 90-91 (2d Cir.), cert. denied, 429 U.S. 980, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976); Past Pluto Prods. Corp. v. Dana, 627 F.Supp. 1435, 1441 (S.D.N.Y.1986). Plaintiff's copyrighted advertisements, "Why are we giving away SOLEX Electric Toothbrush Sets For Only $3?" and "Why Are We Giving Away Famous Nationally Advertised KNOXX World Clocks for only $5" convey the idea that buying mail order from plaintiff provides the consumer with merchandise at a great value. Plaintiff claims copyright protection for its method of embodying that idea, not the idea itself. Plaintiff relies upon its distinct and original combination of slogans (e.g., "This is NOT a misprint"), general advertising copy (e.g., "As part of a nationwide publicity campaign"), title phrased in the form of a rhetorical question, and the arrangement of words and illustrations of the marketable item, to form essentially the same advertisement each time. For each ad, Raffoler changes only the copy particular to that merchandise (name of the product, its price and description), thereby conveying the sales pitch each time using the same means of expression.

B.

Defendants also argue that because plaintiff did not comply with the recordation requirement set forth in 17 U.S.C. §...