Roth Greeting Cards v. United Card Company, 23067.

Citation429 F.2d 1106
Decision Date10 July 1970
Docket NumberNo. 23067.,23067.
PartiesROTH GREETING CARDS, Appellant, v. UNITED CARD COMPANY, an Illinois corporation, Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals (9th Circuit)

Willard H. Horwich (argued), and Morris W. Young, Beverly Hills, Cal., for appellant.

Harvey Grossman (argued), Morton Boren, Henry J. Shames, of Pacht, Ross, Warne, Bernhard, Sears & Nutter, Los Angeles, Cal., for appellee.

Before HAMLEY, KOELSCH and KILKENNY, Circuit Judges.

HAMLEY, Circuit Judge:

Roth Greeting Cards (Roth) and United Card Company (United), both corporations, are engaged in the greeting card business. Roth brought this suit against United to recover damages and obtain injunctive relief for copyright infringement of seven studio greeting cards.1 After a trial to the court without a jury, judgment was entered for defendant. Plaintiff appeals.

Roth's claim involves the production and distribution by United of seven greeting cards which bear a remarkable resemblance to seven of Roth's cards on which copyrights had been granted. Roth employed a writer to develop the textual material for its cards. When Roth's president determined that a textual idea was acceptable, he would integrate that text into a rough layout of a greeting card with his suggested design for the art work. He would then call in the company artist who would make a comprehensive layout of the card. If the card was approved, the artist would do a finished layout and the card would go into production.

During the period just prior to the alleged infringements, United did not have any writers on its payroll. Most of its greeting cards came into fruition primarily through the activities of United's president, Mr. Koenig, and its vice-president, Edward Letwenko.

The source of the art and text of the cards of United, here in question, is unclear. Letwenko was unable to recall the origin of the ideas for most of United's cards. He speculated that the gags used may have come from plant personnel, persons in bars, friends at a party, Koenig, or someone else. He contended that the art work was his own. But he also stated that he visited greeting card stores and gift shows in order to observe what was going on in the greeting card business. Letwenko admitted that he may have seen the Roth cards during these visits or that the Roth cards may have been in his office prior to the time that he did his art work on the United cards.

On these facts, the trial court held for defendant on alternative grounds, lack of jurisdiction and lack of infringement of any copyrightable material.

The trial court based its jurisdictional holding on 17 U.S.C. § 13. This statute provides that no action for infringement of copyright "shall be maintained" until the provisions of Title 17 of the United States Code with respect to the deposit of copies and registration of such work "shall have been complied with."

The provisions of that title with respect to the deposit of copies and registration, insofar as here relevant, are 17 U.S.C. §§ 10, 13 and 209. Under these provisions one who desires to copyright his work by publication: (1) publishes the work with an attached notice of copyright, (2) promptly deposits, in the copyright office or in the mail addressed to the Register of Copyrights, two completed copies of the work and (3) pays the prescribed fee. If these steps have been properly performed it is the duty of the Register of Copyrights to issue a certificate of registration under the seal of the copyright office.

Roth followed the described three-step procedure in seeking copyright protection for its greeting cards on June 6, 1966. The copyright office returned the applications for a change of category of registration. The revised applications were placed in the mail to the copyright office on July 27, 1966, and received there on July 29, 1966. Roth filed this action on July 27, 1966, which was the same day it mailed the revised applications, but two days before they were received by the copyright office.

In holding that Roth failed to comply with 17 U.S.C. § 13, the district court in effect held that an action is "maintained" within the meaning of that statute when it is instituted. The court apparently reasoned therefrom that: (1) under section 13, a district court does not acquire subject-matter jurisdiction of a copyright infringement suit upon the filing of the complaint, if relevant revised copyright applications, required by the copyright office, are not then on file with that office; and (2) jurisdiction is not subsequently conferred upon receipt of the revised applications by the copyright office prior to judgment, at least in the absence of an amended complaint filed after such event.

The cases appear to be divided on the question of whether "maintained" as used in 17 U.S.C. § 13 means "begun" or "continued." But we need not resolve that question, for there are three other reasons why, in our opinion, the district court had subject-matter jurisdiction. First, when plaintiff placed the revised applications in the mail on July 27, 1966, it had done everything required of it under the copyright law with respect to the deposit of copies and registration and could therefore, on that day "maintain" that action, giving the term "maintain" the strict construction the district court adopted; second, the revised copyright applications, made necessary by the incorrect original classification, relate back to the date of filing of the original applications, which was before the complaint was filed;2 and third, the pretrial conference order filed on December 4, 1967, constituted in effect an amended pleading which, being subsequent to the filing of the revised applications, sufficiently satisfied the most technical application of 17 U.S.C. § 13. That pretrial order does not mention the section 13 problem, for defendant did not then advance such a contention. But it specifically recites "* * * this order shall supplement the pleadings and govern the course of the trial of this cause. * * *"

Accordingly we conclude that the district court judgment is not sustainable on jurisdictional grounds.

Turning to the merits, the trial court found that the art work in plaintiff's greeting cards was copyrightable, but not infringed by defendant. The trial court also found that, although copied by defendant, the wording or textual matter of each of the plaintiff's cards in question consist of common and ordinary English words and phrases which are not original with Roth and were in the public domain prior to first use by plaintiff.

Arguing that the trial court erred in ruling against it on merits, Roth agrees that the textual material involved in their greeting cards may have been in the public domain, but argues that this alone did not end the inquiry into the copyrightability of the entire card. Roth argues that "It is the arrangement of the words, their combination and plan, together with the appropriate art work. * * *" which is original, the creation of Roth, and entitled to copyright protection.

In order to be copyrightable, the work must be the original work of the copyright claimant or of his predecessor in interest. M. NIMMER, COPYRIGHT (hereafter NIMMER), § 10 at 32 (1970). But the originality necessary to support a copyright merely calls for independent creation, not novelty. Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir. 1951). Cf. Baker v. Selden, 101 U.S. 99, 102-103, 25 L.Ed. 841 (1879).

United argues, and we agree, that there was substantial evidence to support the district court's finding that the textual matter of each card, considered apart from its arrangement on the cards and its association with artistic representations, was not original to Roth and therefore not copyrightable.3 However, proper analysis of the problem requires that all elements of each card, including text, arrangement of text, art work, and association between art work and text, be considered as a whole.

Considering all of these elements together, the Roth cards are, in our opinion, both original and copyrightable. In reaching this conclusion we recognize that copyright protection is not available for ideas, but only for the tangible expression of ideas. Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 98 L.Ed. 630 (1954). We conclude that each of Roth's cards, considered as a whole, represents a tangible expression of an idea and that such expression was, in totality, created by Roth. See Dorsey v. Old Surety Life Ins. Co., 98 F.2d 872, 873 (10th Cir. 1938).

This brings us to the question of infringement. Greeting cards are protected under 17 U.S.C. § 5(a) or (k) as a book, Jackson v. Quickslip Co., Inc., 110 F.2d 731 (2d Cir. 1940), or as a print, 37 C.F.R. § 202.14. They are the embodiment of humor, praise, regret or some other message in a pictorial and literary arrangement. As proper subjects of copyright, they are susceptible to infringement in violation of the Act. Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940).

To constitute an infringement under the Act there must be substantial similarity between the infringing work and the work copyrighted; and that similarity must have been caused by the defendant's having copied the copyright holder's creation. The protection is thus against copying — not against any possible infringement caused when an independently created work coincidentally duplicates copyrighted material. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936).

It appears to us that in total concept and feel the cards of United are the same as the copyrighted cards of Roth. With the possible...

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