Silvers v. Russell

• Decision Date: 10 June 1953
• Docket Number: No. 13957.,13957.
• Citation: 113 F. Supp. 119
• Parties: SILVERS v. RUSSELL et al.
• Court: U.S. District Court — Southern District of California

113 F. Supp. 119

SILVERS v. RUSSELL et al.

No. 13957.

United States District Court S. D. California, Central Division.

June 10, 1953.

Bernard Reich, Beverly Hills, Cal., and John B. Brady, Washington, D. C., for plaintiff.

Lyon & Lyon, Reginald E. Caughey, Robert Douglas Lyon and Charles G. Lyon, Los Angeles, Cal., for defendants.

YANKWICH, Chief Judge.

The complaint is for infringement of copyright, trademark and unfair competition and consists of four counts. Injunction and damages are sought. The basis for the complaint is the claim, both under Federal copyright laws and under state and federal trademark registration, of a distinctive mark, used as a label on phonograph records and catalogs advertising such records, and consisting of the representation of a phonograph record, with a girl in ballet costume dancing on it. In conjunction with it the words "Stepping Tones" are also used.

I The Requirements of the Law of Copyright

Before discussing, in detail, the facts in the case and the legal principles involved, we point to the fact that two things are necessary to acquire federal copyright: (1) publication of the work with notice, 17 U.S.C.A. § 10, and (2) prompt deposit in the Copyright Office or in the mail of two complete copies of the best edition of the publication. 17 U.S.C.A. § 13. The statute also provides:

"No action or proceeding shall be maintained for infringement of copyright in any work until the provisions of this title with respect to the deposit of copies and registration of such work shall have been complied with." 17 U.S.C.A. § 13.

A copyright claim was allowed in the name of the plaintiff as successor in interest of the author, Zion Myers, on October 5, 1950. The Certificate of Registration gives March 29, 1937, as the publication date shown by the affidavit. At first glance it would seem that so great a lapse of time between publication and deposit would invalidate the claim of copyright. For it might well be argued that a deposit after a lapse of over thirteen years was not compliance with the statute which requires that copies "shall be promptly deposited". 17 U.S.C.A. § 13. But the Courts have held that delay in deposit, while resulting in the penalties of the copyright statute,—a fine of $100 and double the price of the copies,— 17 U.S.C.A. § 14, does not affect the validity of the copyright. This, despite the fact that this section provides,—as did section 13 of the prior Act,—that upon failure to deposit after demand "the copyright shall become void".

In 1939, the Supreme Court in interpreting section 12 of the Copyright Act of 1909—which was the predecessor of the present section 13—in a case where there had been a delay of deposit of nine months held that such delay did not prohibit an action based on infringement prior to the date of the deposit. The Court said:

"Petitioner's claim of copyright came to fruition immediately upon publication. Without further notice it was good against all the world. Its value depended upon the possibility of enforcement.

"The use of the word `until' in section 12 rather than `unless' indicates that mere delay in making deposit of copies was not enough to cause forfeiture of the right theretofore distinctly granted." Washingtonian Publishing Co. v. Pearson, 1939, 306 U.S. 30, 39, 59 S.Ct. 397, 402, 83 L.Ed. 470. (Emphasis added.)

The Court also ruled that the penalty then provided in section 13 and now contained in section 14 is the only penalty for failure to deposit, saying:

"The penalty for delay clearly specified in section 13 is adequate for punishment of delinquents and to enforce contributions of desirable books to the Library. To give section 12 a more drastic effect would tend to defeat the broad purpose of the enactment. The Report of the Congressional Committee points out that forfeiture after notice and three months' further delay was thought too severe by some. Nowhere does it suggest approval of the much more drastic result now insisted upon by respondents.

"Read together as the Committee which reported the bill said they should be, sections 12 and 13 show, we think, the Congress intended that prompt deposit when deemed necessary should be enforced through actual notice by the register; also that while no action can be maintained before copies are actually deposited, mere delay will not destroy the right to sue. Such forfeitures are never to be incurred from doubtful language." Washingtonian Publishing Co. v. Pearson, supra, 306 U.S. at pages 41-42, 59 S.Ct. at page 403. (Emphasis added.)

The Court of Appeals for the Second Circuit in Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 2 Cir., 1946, 161 F.2d 406, 408, followed this ruling in a case where the claim of original copyright had been made in 1912 and a deposit was actually not made until 1939 when the successor in interest of the original copyright owner sought a renewal. So the effect of failure to deposit promptly, so far as the institution of a civil action is concerned, merely means that no action can be maintained until there has been compliance with the Act. That is the teaching of both cases just cited.¹

II Trademarks and Unfair Competition

A claim to trademark filed with the Secretary of State of California under California law, California Business and Professions Code, §§ 14,400-14,402, was allowed on March 29, 1937. The Claim described the mark as "the words Stepping Tones with the figure of a dancing girl," etc. "used in connection with the production and sale of phonograph records". A federal trademark was not secured until March 14, 1952, on an application dated November 13, 1950. It was secured in the name of the plaintiff. The file wrapper, introduced into evidence by the defendant, shows that the original claim was rejected because of uncertainty as to whether the claim extended also to the "representation of the record per se apart from the mark as shown". It was finally allowed when a disclaimer as to such representation was filed.

In our view, the mark was clearly valid under the Trade Mark Act. 15 U.S. C.A. §§ 1051-1052. The representation of a dancing girl on top of a phonograph record is a fanciful idea. A dancing girl in front of a phonograph record might not be fanciful because dancers dance to phonograph records, but not on top of phonograph records. So the cases upon which the defendant relies in urging the invalidity of the mark, such as the representation of a horse on a box containing a horse medicine, Bickmore Gall Cure Co. v. Karns Mfg. Co., C.C.Pa.1903, 126 F. 573, or the representation of a woman pouring the contents of a can into a toilet bowl, Judson Dunaway Corp. v. Hygienic Products Co., 1 Cir., 1949, 178 F.2d 461, or the representation of a circle or ball as a symbol, Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 6 Cir., 1941, 119 F.2d 316, 325, do not apply. For in those cases, the Courts were dealing either with an indistinct symbol, such as a circle or ball or the representation of a figure of an animal or a human being. And they held that their use did not prevent others from using them in a different manner. Indeed, the Judson case, upon which greatest reliance is placed by the defendant,—the "Sani-Flush" case,— recognized the validity of the mark but merely held that the use of the word "Vanish" and the contrasts in posture of the figure showed a distinction which militated against infringement. The Court said:

"Of course, the defendant cannot represent its product in use in such a setting, or in such a way, as to render it likely that the purchasing public will confuse its product with that of the plaintiff. But this does not mean that the defendant is relegated to advertising its product by showing it in use by an old crone in a mother hubbard with a scowl on her face. Clearly in advertising, to quote from the current musical play `South Pacific', `There is nothing like the frame of a dame', and we cannot see why the defendant is not as much entitled to take commercial advantage of pulchritude as the plaintiff." Judson Dunaway Corp. v. Hygienic Products Co., 1 Cir., 1949, 178 F.2d 461, 466.

We return to the label involved here and apply to it the criteria of these cases. And the conclusion is warranted that we are not dealing with a mere representation of a woman or animal in an ordinary position. We are dealing with a fanciful conception, a girl dancing on top of a phonograph record. This is a distinctive mark entitled to registration and culminated in a proprietary right, the infringement of which would, even in the absence of registration, be protected as unfair competition. It was also "an original expression of an idea" as that phrase is used in the law of copyright.

Originality in the realm of copyright "* * * refers to the form of expression and not to novelty in the subject matter." Chamberlin v. Uris Sales Corporation, 2 Cir., 1945, 150 F.2d 512, 513. (Emphasis added.)

See, Dorsey v. Old Surety Life Ins. Co., 10 Cir., 1938, 98 F.2d 872, 873, 119 A.L.R. 1250; Harold Lloyd Corporation v. Witwer, 9 Cir., 1933, 65 F.2d 1, 24; Ansehl v. Puritan Pharmaceutical Co., 8 Cir., 1932, 61 F.2d 131, 135-136; Ricker v. General Electric Co., 2 Cir., 1947, 162 F.2d 141, 142; Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 2 Cir., 1951, 191 F.2d 99, 101-102; Yankwich, Originality in the Law of Intellectual Property, 1951, 11 F.R.D. 457, 482.² If, as appears here, the mark has enough originality to be copyrightable, it certainly is distinctive enough to satisfy the lesser demands of trademark law. In the latter field, the courts have drawn the distinction between illustrations which merely describe a product,—the functional, and the non-functional which are a whimsical representation of a particular product. Enterprise Manufacturing Co. v. Landers, Frary & Clark, 2 Cir., 1904, 131 F. 240 (the "coffee mill" case considered by many as the first case on the subject); Crescent Tool Co. v. Kilborn &...