Stein v. Mazer

• Decision Date: 20 February 1953
• Docket Number: Civ. No. 5879.
• Parties: STEIN et al. v. MAZER et al.
• Court: U.S. District Court — District of Maryland

111 F. Supp. 359

STEIN et al. v. MAZER et al.

Civ. No. 5879.

United States District Court, D. Maryland.

February 20, 1953.

Joseph T. Brennan, 2d, Baltimore, Md., George E. Frost, Chicago, Ill., for plaintiffs.

Max R. Kraus, Chicago, Ill., for defendants.

WILLIAM C. COLEMAN, Chief Judge.

This proceeding is for alleged infringement of six copyrights for small three-dimensional statuettes of male and female dancing figures made of semi-vitreous china, registration of which was granted to the plaintiffs by the Copyright Office.

The plaintiffs, husband and wife, are citizens of California, doing business as partners, in Montebello, California, under the name of Reglor of California, in the design and casting of small statuary. The defendants are citizens of Maryland and, as partners, do business under the name of June Lamp Manufacturing Company, in Baltimore, as assemblers of table lamps which they sell, both wholesale and retail, throughout the country.

Registration of the statuettes here in issue was applied for and obtained by plaintiffs in 1950 under section 5(g), Title 17, U.S.C.A., entitled "Copyrights—Classification of Works for Registration", which provides as follows: "The application for registration shall specify to which of the following classes the work in which copyright is claimed belongs: * * *.

"Works of art; models or designs for works of art".

As registered, all of the statuettes are of dancers, male and female, purely ornamental and disclose no lamp attachments, although, with very few exceptions, the plaintiffs have never sold any of their statuettes other than as complete table lamps, that is, with the statuette figure as the lamp base and the lighting parts fitted thereto,— the electric wiring, sockets, and lamp shades. Similarly, the defendants' statuettes, which are alleged by plaintiffs to infringe their own statuettes and are of identical size, design and conformation, have always been sold by the defendants as table lamps, that is, with the electric wiring, sockets, and lamp shades included,— never merely as statuettes.

Plaintiffs contend that, in spite of the fact that, as registered in the Copyright Office, their statuettes disclose no lamp attachments, they, nevertheless, by such registration, have obtained the right to exclude any one from manufacturing or selling statuettes of the same form and design, regardless of the fact that they may be converted, as defendants have converted their identical statuettes, to a utilitarian purpose, namely, to electric table lamps.

Defendants deny that plaintiffs' copyrights give them any such monopoly, since the registration of the copyrights for plaintiffs' statuettes was secured for them as "Works of art" under the copyright laws, whereas the statuettes that they sell are not "Works of art" as defined in these laws, but are articles of manufacture for utilitarian purposes and, if entitled to protection, such is to be obtained not under the copyright but under the patent laws.

We have already quoted the pertinent provision of the copyright laws under which plaintiffs obtained their copyrights. In furtherance of this provision, the Copyright Office has adopted the following regulation, Regulation 202.8, 17 C.F.R., Chapter II, 202.8; 17 U.S.C.A. following section 207: "Works of art (Class G)—(a) In general. This class includes works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture. Works of art and models or designs for works of art are registered in Class G on Form G, except published three-dimensional works of art which require Form GG." (Emphasis supplied.) Previous regulations going back for a number of years were to the same effect, with only some variation in phraseology.

The Copyright Office, under the jurisdiction of the Library of Congress, upon the filing of an application for copyright registration and the payment of the requisite filing fee, issues a certificate of copyright, provided the application is found to fall within one of the classes for which the copyright law provides, and meets the regulations of the Copyright Office promulgated with relation thereto. Thus, the issuance of the certificate of copyright is a perfunctory matter. The Copyright Office conducts no examination to determine the existence of novelty or invention in the subject matter. The certificate, when issued, is effective for a term of 28 years and may be renewed perfunctorily for another like term.

Under the patent laws, Sections 4929 and 4933 of the Revised Statutes, 35 U.S.C.A. § 73, provision is made for design patents, as follows: "Any person who has invented any new, original, and ornamental design for an article of manufacture, not known or used by others in this country before his invention thereof, and not patented or described in any printed publication in this or any foreign country before his invention thereof, or more than one year prior to his application thereof, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may * * * obtain a patent therefor.

"All the regulations and provisions which apply to obtaining or protecting patents for inventions or discoveries not inconsistent with the provisions of this title, shall apply to patents for designs." (Emphasis supplied.)

The section of the patent laws that deals with infringement of design patents provides as follows, 35 U.S.C.A. § 74: "During the term of letters patent for a design, it shall be unlawful for any person other than the owner of said letters patent, without the license of such owner, to apply the design secured by such letters patent, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or to sell or expose for sale any article of manufacture to which such design or colorable imitation shall, without the license of the owner, have been applied, knowing that the same has been so applied. * * *." (Emphasis supplied.)

Design patents have been provided for by Acts of Congress since 1842, when the first design patent Act was passed, and a great many design patents on articles of manufacture have been granted throughout the years. See Gorham Mfg. v. White, 14 Wall. 511, 81 U.S. 511, 20 L.Ed 731; Glen Raven Knitting Mills v. Sanson Hosiery Mills, 4 Cir., 189 F.2d 845. Briefly summarized, the procedure in the Patent Office with respect to design patents, is that, upon the filing of an application for such a patent, including a drawing of the design, a description thereof and claim therefor, the Patent Office conducts a critical examination of the pertinent prior art on record in the Patent Office to determine whether the design is new, original, and ornamental, and possesses the quality of invention. If these requirements are met; the Patent Office then may issue a patent for the design for a term of either 3½, 7 or 14 years, at the applicant's election, with a sliding scale of fees. 35 U.S.C.A. §§ 77, 78. Design patents are not renewable. The designs become public property when the patents for them expire.

It is readily apparent from a comparison of the foregoing provisions of the copyright laws relative to "Works of Art" with those of the patent laws relative to ornamental design for articles of manufacture, that there is a distinct difference between what is contemplated by these separate laws. And so it has been stated in numerous decisions. See especially Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349; Taylor Instrument Company v. Fawley-Brost Co., 7 Cir., 139 F.2d 98, certiorari denied 321 U.S. 785, 64 S.Ct. 782, 88 L.Ed. 1076.

It is unfortunately true that the Supreme Court has never squarely ruled upon this distinction, as applied to facts such as exist in the case before us. However, in Stein v. Expert Lamp Company, 188 F. 2d 611, a decision of the Court of Appeals for the Seventh Circuit, rendered in 1951, where the plaintiffs were the same as in the present case, the distinction between the scope of the copyright and the patent laws was recognized. There, these same plaintiffs sued the Expert Lamp Company for infringement of statuettes very similar to those here involved. The District Court dismissed the complaint, 96 F.Supp. 97, holding that the plaintiffs' submission to the Copyright Office of the statuettes with so-called mounting stubs for electric lamp sockets was evidence of the practical use to which the statuettes were intended to be put, and that the plaintiffs could not monopolize such use under the copyright statute. Plaintiffs petitioned the District Court to reconsider the case on the ground that their counsel had, entirely through inadvertance, mistakenly informed the Court in the course of the original hearing that the statuettes filed with the Copyright Office, on which registration was granted, embodied lamp mounting-stubs, which was not the case. The petition for reconsideration was denied on the ground that what it disclosed was "immaterial to the decision in this case".

On appeal the District Court was affirmed, 188 F.2d 611; rehearing was also denied and the Supreme Court denied certiorari. 342 U.S. 829, 72 S.Ct. 53, 96 L.Ed. 627. The appellate court said 188 F.2d at pages 612-613: "In arguing for a reversal, plaintiffs make the point that the fact that the statuette may be utilized for some pracicable use does not change the character of it. They insist that a sculptured statue is a `work of art,' and since statuary is registraable matter they are entitled to protection, and the copyrights must be enforced. On the other hand, defendant contends that plaintiffs' copyrights do not cover or protect an electric table lamp, and that the Copyright Office cannot...