Rosenthal v. Stein

• Decision Date: 26 June 1953
• Docket Number: No. 13596.,13596.
• Citation: 205 F.2d 633
• Parties: ROSENTHAL et al. v. STEIN et al.
• Court: U.S. Court of Appeals — Ninth Circuit

205 F.2d 633 (1953)

ROSENTHAL et al. v. STEIN et al.

No. 13596.

United States Court of Appeals Ninth Circuit.

June 26, 1953.

Fulwider, Mattingly & Babcock, Los Angeles, Cal., for appellants.

Miketta & Glenny, Los Angeles, Cal., for appellees.

Before STEPHENS and POPE, Circuit Judges, and McCORMICK, District Judge.

STEPHENS, Circuit Judge.

Appellees, as plaintiffs in the United States District Court for the Southern District of California, were victorious over appellants, as defendants, the court holding, contrary to defendants' claims, that the latter had infringed and were infringing plaintiffs' work of art copyrights upon four statuettes. The statuettes represent respectively an Egyptian male dancer, an Egyptian female dancer, a curved ballet male dancer, and a curved ballet female dancer, each clothed in character and posed upon a substantial base.

The parts of the copyright act applicable here are:

"Any person entitled thereto, upon complying with the provisions of this title, shall have the exclusive right: (a) To * * * copy, and vend the copyrighted work; * * *."¹ Emphasis ours.

Section 5 of the same title provides the copyrightable classifications from subsections (a) to (m) inclusively. The classification involved in the three statuette cases referred to herein, is:

"(g) Works of art; models or designs for works of art."²

Appellants do not claim the right to copy or to vend the figures as statuettes. They admit the validity of the copyrights and that they are owned by appellees, but they do claim the right to make and to sell, and admit that they do make and sell, exact copies of the statuettes as copyrighted except for an unseen pipe extending from the bottom of the base through the length of the figure and obtruding very slightly above the headdress. Through the pipe an electric cord is drawn and upon or in the protrusion an ordinary electric light socket is screwed. The assembly is now ready for the light bulb and shade, and is a lamp.

Appellees, as owners of the copyrights, do the very same thing, advertise the lamp pictorially, and do an extensive business selling them. In fact, appellees first adapted the statuettes to use as lamp stands and appellants followed with their acts of copying.

Appellants are of the view that, while a copyrighted work of art may not be copied and sold without the consent of the copyright holder, yet when the object copyrighted is combined with something else and the resulting combination is a utility, the combination is not a copyrighted work of art and is not and cannot be protected by the copyright law. District Judge Tolin, in the instant case, Stein v. Rosenthal, 103 F.Supp. 227, was not impressed with appellants' view and held, in effect, that the copyrightee could use the work of art as a component part of a functional article manufactured for sale as such, but no one else could do so without paying tribute.

Before Judge Tolin's decision in the instant case, the United States District Court for the Northern District of Illinois, Judge La Buy presiding, had the same point before it in the case of Stein v. Expert Lamp Co., 96 F.Supp. 97, and the court held just the opposite from the district court holding in our case. The copyrighted objects in suit were created by the same artist who created the copyrighted objects in our case. The statuettes therein were entitled "Sculptured Figure of Male Balinese Dancer" and "Sculptured Figure of Female Balinese Dancer". The court's opinion revealed the fact the court had mistakenly thought the original of the statuettes had been copyrighted, equipped for use as electric light standards. The court later corrected the error but adhered to its decision. The United States Court of Appeals affirmed the decision, Stein v. Expert Lamp Co., 7 Cir., 188 F.2d 611.

Subsequent to the two above referred to decisions and the affirmance of the Expert Lamp Co. case in the Court of Appeals, the same point was before the United States District Court for Maryland, Judge Coleman presiding. Stein v. Mazer, D.C., 111 F.Supp. 359. The statuettes therein were the six involved in the two actions above cited. The Maryland District Court, with the Illinois federal court and the California federal court opinions before it, followed the former. Upon appeal, the United States Court of Appeals, with the foregoing cited opinions before it, quoted liberally from the California District Court opinion and, agreeing generally with it, reversed the judgment. Stein v. Mazer, 4 Cir., 1953, 204 F.2d 472.^2a

A reading of the opinion last cited above will reveal the fact that the issue is complicated with the subject of design letters-patent. The law as to design patents is in part as follows:

"Any person who has invented any new, original, and ornamental design for an article of manufacture, * * * may * * * obtain a patent therefor. * * *"³

It should be kept in mind, however, that no application for a design patent has ever been made in either of the three actions which we have referred to, but that the creator of the original statuettes in each of the actions has received the exclusive right to "copy" and "vend" them under the grant of the copyright privilege.

We do not read the design patent law as stronger or prevailing over the copyright law, hence we are of the opinion that when the creator of the statuettes was granted copyright privileges as to them, such privileges became rights and cannot be affected by a speculation that possibly the objects could have been patented as designs. And such rights cannot be affected by the gratuitous use of the creations by strangers for ornamental supports for a household utility — in this case a lamp. The theory that the use of a copyrighted work of art loses its status as a work of art if and when it is put to a functional use has no basis in the wording of the copyright laws and there is nothing in the design-patent laws which excludes a work of art from the operation of the copyright laws. We agree with the note to the article in 66 Harv.L.R. 882^3a that "The argument that useful articles purporting to be works of art should be excluded from copyrighting because they may qualify for design patents is not convincing."

The area in which a thing would be either a copyrightable work of art or a patentable design, but not the other, is perhaps unsurveyable. Whether a thing is a work of art or a patentable design, or is a patentable design and not a work of art, cannot be determined by excluding one from the other. A thing is a work of art if it appears to be within the historical and ordinary conception of the term art. A thing is a design by the same token. The two are not necessarily distinct one from the other. Neither goes to the functioning of a utility.

An opinion on copyright would be unusual indeed that did not mention the case entitled Bleistein v. Donaldson Lithographing Company, 1903, 188 U.S. 239, 23 S.Ct. 298, 300, 47 L.Ed. 460. This is the celebrated circus poster case in which Justice Holmes discoursed upon art and copyrights. Plaintiffs sued defendant to recover the penalties prescribed for infringement. The objects copyrighted were chromolithographs which, as circus posters, were especially adapted to advertise "Wallace" shows. After Wallace had "given them up" they were "used by less pretentious exhibitions * * *." The trial court found for the defendant. It has been suggested that the posters could not be the subjects of legal copyright because they were not art and because they were used commercially. The court said, 188 U.S. at page 251, 23 S.Ct. at page 300, "Again, the act, however construed, does not mean that ordinary posters are not good enough to be considered within its scope. The antithesis to `illustrations or works connected with the fine arts' is not works of little merit or of humble degree, * * * it is `prints or labels designed to be used for any other articles of manufacture.' Certainly works are not the less connected with the fine arts because their pictorial quality attracts the crowd, and therefore gives them a real use, — if use means to increase trade and to help to make money." Bleistein v. Donaldson Lithographing Company, supra The double quotations are from the copyright statutes relevant to the cited case.

Under the principles of the Bleistein case a work of art appears to be no less subject to protection of a copyright if it is prepared for and used commercially as a means of making money. We know of no authority to the contrary. And we think the principle or the teaching of the case is that the protection...