United States v. Backer, 119.

• Decision Date: 06 April 1943
• Docket Number: No. 119.,119.
• Citation: 134 F.2d 533
• Parties: UNITED STATES v. BACKER et al.
• Court: U.S. Court of Appeals — Second Circuit

134 F.2d 533 (1943)

UNITED STATES v. BACKER et al.

No. 119.

Circuit Court of Appeals, Second Circuit.

April 6, 1943.

Samuel L. Wallerstein, of New York City (Harold Harper and Vincent P. Uihlein, both of New York City, of counsel), for defendant-appellant.

Mathias F. Correa, U. S. Atty., and Clayton D. Hollinger, both of New York City, for appellee.

Before L. HAND, CHASE, and CLARK, Circuit Judges.

CHASE, Circuit Judge.

Appellant Backer was convicted in the District Court for the Southern District of New York after a trial by court, a jury having been expressly waived, upon each of two counts in an information. There was a severance as to another defendant which left the appellant the sole defendant tried.

The information charged in the first count the willful infringement for profit, in violation of § 28 of the Copyright Act, 17 U.S.C.A. § 28, of the copyright on a statue of a male figure called the "Harvester," copyrighted on or about August 7, 1940, by Americana Designs, and the second count charged the like infringement of a figure of a female "Harvester" copyrighted by the same proprietor at the same time the male figure was copyrighted.

Americana Designs, which is the proprietor of the copyrights, is the trade name of a partnership made up of Dayton Brandfield, his wife, and Lou Breslow, all of whom are artists. Together they conceived the idea of making the two statues; designed them according to their own joint concept; and on July 29, 1940, received cast reproductions of the models to be painted for sale. They were then "published" with notice of copyright, either on July 31, 1940, as Brandfield finally testified or on August 7, 1940, as he at first testified, and two copies of each statue were forwarded to the copyright office for deposit there. The precise date of the sending of the copies is somewhat uncertain but it was shown that they were received at that office on August 7, 1940, and the certificates, which were issued in due course, show the publication date as that day. The applications for the registration, however, were filed before that and on July 23d, which was, of course before either possible publication date, whichever may be correct.

Reversal of the judgment is sought on the grounds that no willful infringement was proved; that the registration of the copyright was invalid; that evidence was erroneously admitted and that the appellant's motion for an order to permit the taking of colored pictures of the copies filed by the applicant for copyright in the copyright office was wrongfully denied.

On the first point the evidence of willful copying to produce the figurines to sell for profit was overwhelming. It was adequately shown that the appellant, who did business under the trade name Alexander Backer Company, which was set up as a defendant in the information and as to which there was the severance already mentioned, took the copyrighted figurines to the Florence Statuary Company in Brooklyn, N. Y., and arranged to have somewhat similar little statues made from them. An employee of that company then made similar little statues using the copyrighted figurines, which will now be called the Americana Harvesters, and two other little figures the appellant furnished, as models. When the appellant saw the "Harvesters" so made for him he rejected them as being too like the Americana Harvesters. Another attempt to produce Harvesters in the same general way did not satisfy him because those little figures were too unlike the Americana Harvesters. Then the employee of the Florence Company who was doing the work was told by the appellant to make some Harvesters which would resemble the "Americana Harvesters" as closely as they might without "copyright trouble." Reproductions of Harvesters made after those instructions were sold by the appellant. What they were was proved by other like reproductions introduced in evidence. A comparison of them with Americana Harvesters also in evidence leaves no doubt, in view of the other evidence in the case, that they are in most respects copies of the copyrighted figurines as charged in the indictment. Nor can there be any fair doubt that the appellant deliberately had the copies made and deliberately sold them for profit.

A more difficult issue is presented by the appellant's contention that the registration of the copyright on each Americana Harvester is invalid. This subject is presently of vital importance since § 12 of the Copyright Act, 17 U.S.C.A. § 12, makes compliance with the provisions of the Act as to deposit of copies and registration a condition precedent to the maintenance of any action for infringement. The term "action" used in this setting includes a criminal as well as a civil action. Compare, Caha v. United States, 152 U.S. 211, 14 S. Ct. 513, 38 L.Ed. 415; Singleton v. United States, 4 Cir., 290 F. 130; Mason v. United States, 7 Cir., 1 F.2d 279.

Since there was substantial evidence to the effect that the Americana Harvesters were copyrightable material and that two exact copies of each were deposited in the copyright office before the certificate of registration was issued, we take it for granted that the trial judge so found and take up at once the question of the validity of a registration upon an application made before there has been any publication with copyright notice or deposit of copies in the copyright office but not acted upon until after there has been both publication with copyright notice and deposit of copies. It is well settled that publication with notice is sufficient to copyright whatever may be copyrighted at all. The need for a valid registration of a claim to copyright arises only because under § 12 of the...