Stein v. Rosenthal, 12447-T.
| Decision Date | 21 February 1952 |
| Docket Number | No. 12447-T.,12447-T. |
| Parties | STEIN et al. v. ROSENTHAL et al. (Santi, third party defendant). |
| Court | U.S. District Court — Southern District of California |
COPYRIGHT MATERIAL OMITTED
Casmir A. Miketta and William W. Glenny, Los Angeles, Cal., for plaintiffs.
Robert W. Fulwider, Los Angeles, Cal.,
Harold J. Downes, Lynwood, Cal., for third party defendant.
An Opinion is indicated because contentions have been made that the copyrights involved in this case are invalid for the same reasons which voided the same plaintiffs' copyrights of similar subject matter in Stein v. Expert Lamp Company, 7 Cir., 1951, 188 F.2d 611, Id., D.C., 96 F.Supp. 97. There are points of similarity and also points of dissimilarity between the facts in this case and those in the cited case.
Plaintiffs are copyright proprietors concerning four copyrights for which the Register of Copyrights has issued certificates of registration in Class H, identified as Certificates 1721, 1723, 1737 and 1738. The certificates relate to statuettes or sculpture entitled Male and Female Curved Ballet Dancers; Egyptian Dancer, Male; and Egyptian Dancer, Female. Under the partnership style Reglor of California, plaintiffs have reproduced and sold many copies in the form of statuettes, each one of which has been marked with the required statutory notice. A few copies of some of the statues were sold simply as statuettes. By far the greater number were wired with electrical assemblies to which lamp shades were attached and were sent to the retail market by plaintiffs as the supporting bases of fully assembled table lamps.
The photographs of the statuettes deposited with the Copyright Office, as part of the claimed copyright in a reproduction of a work of art, are photographs of mere statues alone without electrical assemblies, lamp shades, lamp mounting stubs or any other addition to the purely artistic sculpture. Insofar as the copyright registration shows, the several works registered are statues only. There is no suggestion in any of the several claims to copyright of any claim except the form of the figures. There are no mechanical or utilitarian aspects to the statues. None of the claims to copyright suggest any utilitarian use and if adaptability to such a purpose were to be sought solely from examination of the copyrighted material, the result would be negative.
It is contemporary interior decorating practice to place lamp assemblies in or near vases, urns, figures and other art objects. Some of the exhibits received in trial of the unfair competition aspects of this case consist of carved figures anchored to a base which also supports a table lamp which is complete in itself and not dependent in any way upon the accompanying statue. Awareness of the current decorators' custom might suggest to the possessor of any one of the figures as copyrighted that it could be advantageously placed on or near the same base used to support a table lamp, or even that it might be wired itself and thereby integrated into the lamp. Any such idea generated in the mind of one coming upon plaintiffs' registrations in the Copyright Office would arise from awareness of the current fashion rather than from examination of the copyrighted sculpture. Viewed under like circumstances some years ago the suggestion of adaptation to usefulness, again coming from awareness of a prevailing fad, might have been to insert a ring into the figure and use it as a hitching post. To some observers these might seem inappropriate figures for such a use. The same might be thought of a current use of the figures in lamp assemblage. The point, insofar as this case is concerned, is simply that the copyrighted material is in itself non-utilitarian and non-mechanical. Protection is not dissipated by taking an unadulterated object of art as copyrighted and integrating it into commercially valuable merchandise. The appropriateness of copyright registration is determined by the character of the registered work of art as registered and not by the ability, intent or hope of the registrant to use it as a dress for a utilitarian object. Copyright protection is not reserved exclusively to proprietors who do not intend to earn money by commercialization of their art.
Plaintiffs and defendants are competing manufacturers of what they describe as "action lamps". As understood in the lamp trade, this term describes electric table lamps in which a statuette of some figure in action is either employed as the supporting member of the lamp or as the base of the lamp or as a decorative accompanying figure. After obtaining the copyrights in question, plaintiffs copied the statuettes of the action lamps. Defendants obtained some of plaintiffs' lamps in the open market and copied the whole thereof including the copyrighted statuettes. Adaptation to practicality of the copied art and both plaintiffs' and defendants' use thereof was accomplished by molding a metallic electrical conduit into statuettes which were exact replicas of the copyrighted material. Lamp mounting stubs were added and the completed lamp, including light bulb and shade, placed into commerce. In their action for infringement of copyright, plaintiffs do not seek to enjoin defendants from making action lamps or even action lamps of similar design. They do seek to enjoin defendants from copying the statuettes which they themselves have copied and which are the only subject of copyright protection in this case. Pending determination of this action, defendants have suspended manufacture of the questioned articles. It is these facts that distinguish this litigation from plaintiffs' earlier suit against another defendant. The products involved in Stein v. Expert Lamp Company, supra, were 188 F.2d 612. "Sculptured Figure of Male Balinese Dancer" and "Sculptured Figure of Female Balinese Dancer". Unlike the Egyptian dancers and ballet figures involved in the case now before the Court, the Decision in the Expert case states that the copies submitted to the Copyright Office including projecting lamp stubs. After procuring certificates of registration from the Register of Copyrights, plaintiffs extensively manufactured table lamps embracing copies of the copyrighted statues. Defendants procured a set at retail. They caused the removal of the copyright notice and employed third party defendant, Valentino Santi, to make casts of the copyrighted statuettes and placed a substantial order with him for statuettes made from such casts. Defendants requested him to insert a copyright notice in the place from which they had removed plaintiffs' notice of copyright. This he refused to do but finally compromised with defendants by inserting the legend "Pat Co."
Plaintiffs' copies of their protected statues, as used in their lamp business, differed from the copyrighted originals in that they were cast with electrical conduits and mounting stubs added to the sculpture. So were the copies cast for the defendants by Valentino Santi, the third party defendant. In this respect they materially differed from original statues submitted for the registration which had been perfected under Section 5(g) of Title 17, United States Code Annotated. It is this difference which distinguishes this case from Stein v. Expert Lamp Company, 7 Cir., 1951, 188 F.2d 611, Id., D.C., 96 F.Supp. 97. (Both Opinions should be read to get all of the facts.) But for the addition of mounting stubs which adapted them to the lamp manufacturer's use, the infringing copies were identical with the non-utilitarian originals depicted on the registration certificates.
It is admitted that defendants have copied plaintiffs' copyrighted statues. This was wilfully done after deliberate removal of the copyright notice. The defense is that the statues were initially ineligible for copyright protection because of adaptability of copies to integration with other objects into a table lamp. Defendants contend that if not initially ineligible to copyright protection, the protection has evaporated with the use to which the statuettes have been placed. Defendants insist that copyright protection is very narrow and if a manufacturer conceives an...
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