Sherry Mfg. Co., Inc. v. Towel King of Florida, Inc.

• Decision Date: 27 February 1985
• Docket Number: No. 83-5810,83-5810
• Citation: 753 F.2d 1565
• Parties: , 1985 Copr.L.Dec. P 25,765 SHERRY MANUFACTURING COMPANY, INC., Plaintiff-Appellee, Cross-Appellant, v. TOWEL KING OF FLORIDA, INC., a Florida Corporation, Defendant-Appellant, Cross-Appellee.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 1565

753 F.2d 1565

225 U.S.P.Q. 1005, 1985 Copr.L.Dec. P 25,765

SHERRY MANUFACTURING COMPANY, INC., Plaintiff-Appellee Cross-Appellant, v. TOWEL KING OF FLORIDA, INC., a Florida Corporation Defendant-Appellant, Cross-Appellee.

No. 83-5810.

United States Court of Appeals Eleventh Circuit.

Feb. 27, 1985.

Eugene F. Malin, Malin & Haley, Fort Lauderdale, Fla., for defendant-appellant, cross-appellee.

Carlton H. Hoel, Miami, Fla., Jack E. Dominik, Miami Lakes, Fla., for plaintiff-appellee, cross-appellant.

Appeals from the United States District Court for the Southern District of Florida.

Before TJOFLAT and FAY, Circuit Judges, and ALLGOOD ^*, District Judge.

FAY, Circuit Judge:

Sherry Manufacturing Company ("Sherry") brought suit in federal district court against Towel King of Florida ("Towel King") alleging copyright infringement and unfair competition. Sherry's complaint essentially alleged that Towel King copied and distributed a beach towel bearing one of Sherry's copyrighted designs. The trial court agreed and judgment was entered in favor of Sherry and against Towel King for $87,920.20. While we accept without hesitation the majority of the trial court's findings of fact and conclusions of law, we do not find that Sherry's derivative work, as a matter of law, was copyrightable. When compared to the public domain design, it simply lacks sufficient originality to justify copyright protection. We therefore reverse.

FACTS

Sherry and Towel King are both incorporated in the state of Florida and are competitors in the souvenir beach towel industry. The subject matter of this lawsuit relates to a beach towel having a silk screen printed decorative scene depicting three palm trees reaching upward out of the sand, an ocean view above the sand with a sailboat in the right hand corner, and clouds above the ocean horizon. The evidence is uncontroverted that Sherry first marketed such a towel ("Sherry's Original Design") in the early 1960's. Sherry's Original Design was not copyrighted, and Sherry's founder and Chief Operations Officer, Quentin Sandler, testified that more than one competitor copied this design for use on their own products. (T. at 195).

In 1975, Sherry decided that it would be in its best interest to obtain copyright protection for its various designs. Juliana Bramucci, Sherry's artist, was assigned the task of redesigning Sherry's Original Design. This alteration process, which involved for the most part subtle changes in the dimensions of the beach, trees and water, was completed in September of 1976. A towel printed with the "New Design" along with the appropriate application to register a copyright was thereafter submitted to the United States Copyright Office and given Registration No. K 120614.

Shortly after copyrighting their New Design, Sherry noticed what has been termed by the parties a "watermark defect" in the artwork. This error is simply a patch of blue where the trunk of the middle tree should be, giving the illusion that one is looking through the trunk at the ocean. ¹ Ms. Bramucci testified that she corrected this error immediately after it was brought to her attention. Sherry thereafter printed and marketed beach towels featuring the corrected version of the New Design. ("Corrected New Design").

In 1981, Sherry learned that one of its competitors, Towel King, was selling a beach towel which appeared to be identical to Sherry's New Design. ² In fact, Towel King's product even included the telltale watermark defect. On August 4, 1981, Sherry filed this copyright infringement action against Towel King.

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COURSE OF PROCEEDINGS

Sherry's complaint essentially alleged copyright infringement and unfair competition. Defendant Towel King denied the allegations contained in Sherry's complaint and counterclaimed on the basis of illegally obtained copyright and unfair competition. A bench trial commenced in federal district court on July 18, 1983. At the conclusion of the trial, the district court entered a judgment in favor of Sherry and against Towel King for $87,970.20. In addition, Towel King was enjoined for the life of Sherry's copyright from marketing any products bearing the copyrighted design, and the relief sought by Towel King in its counterclaim was denied. ³

COPYRIGHTABILITY

The main issue raised by appellant Towel King is whether Sherry sustained its burden of proving copyrightability of its New Design. The trial court found that the variations in Sherry's New Design were original and substantial enough to be copyrightable. We disagree.

It is well settled that in order to qualify for a separate copyright, the derivative work must contain some substantial, and not merely trivial, originality. Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 34 (2d Cir.1982); L. Batlin & Son v. Snyder, 536 F.2d 486, 490 (2d Cir.) (en banc), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976); Chamberlin v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir.1945); see 1 M. Nimmer, Nimmer on Copyright Sec. 3.03, at 3-10 (1984). Admittedly, the difference between what constitutes sufficient originality and what amounts to a trivial, insubstantial variation, is a fine line indeed. Nevertheless, that line has to be drawn somewhere, and in doing so, we must be mindful of the importance of the concept of originality to the overall copyright scheme:

Since under the Constitution only an "author" is entitled to copyright protection, the meaning of the term is obviously of major importance. The Supreme Court, in Burrow-Giles Lithographic Co. v. Sarony [111 U.S. 53, 58, 4 S.Ct. 279, 28 L.Ed. 349 (1884) ], defined an "author" in a Constitutional sense to be " 'He to whom anything owes its origin; originator, maker.' " Thus, the one indispensable element of authorship is originality. One who has slavishly or mechanically copied from others may not claim to be an author.

1 M. Nimmer, supra, Sec. 1.06[A], at 1-37.

A side by side comparison of Sherry's Original Design with the New Design convinces this court that the contributions made by Sherry's artist are simply too trivial and too insubstantial to justify copyright protection. We are of course aware of the variations in the two designs as set forth in the trial court's Finding of Facts. ⁴ Our conclusion, however, is influenced by the obvious fact that the majority of those distinguishing details are so minor that they are virtually unnoticeable upon a cursory comparison of the two towels. Those variations which do eventually rise to the forefront of attention do so only because they entail simple, but more obvious, changes in the spacing and dimensions of non-detailed features such as the sand and ocean. In our opinion, it would be contrary to the...