Yuengling v. Schile

• Decision Date: 03 April 1882
• Citation: 12 F. 97
• Parties: YUENGLING, Jr., v. SCHILE.
• Court: U.S. District Court — Southern District of New York

12 F. 97

YUENGLING, Jr., v. SCHILE.

United States Circuit Court, S.D. New York.

April 3, 1882

Charles Unangst, for plaintiff.

W. F Pitshke, for defendant.

BROWN D.J.

The plaintiff moves, upon a bill of complaint and affidavits, for a preliminary injunction to restrain an infringement of the plaintiff's rights under a copyright alleged to have been obtained by him on the twenty-third of August, 1880, upon a 'chromo' entitled 'Gambrinus and his followers.' The moving papers allege that the complainant on that day was a citizen of the United States, and 'proprietor of said chromo;' that he filed on that day, before publication, in the office of the librarian of congress, the title or description thereof, and on the same day deposited in his office two copies of the same, and gave notice of his copyright by inscribing on the visible front of such chromo, near the bottom, the words 'Copyrighted 1880, by D. G. Yuengling, Jr., New York;' that he has been at great expense in producing such chromo, and that the same is of great value to him; that he has used it as a gratuitous advertisement in his business as a lager-beer brewer; and that the defendant is about to issue a piratical imitation of such chromo, in violation of the plaintiff's right in such copyright.

The complainant's chromo is of evident artistic merit. It is designed as a symbolic glorification of lager-beer drinking. In the center is a conspicuous figure of King Gambrinus, his left arm resting upon a keg of lager, and his right holding aloft a foaming glass of that beverage. On either side of him are a dozen figures of persons representing various classes in life, into whose eager hands his page is distributing the drink. This chromo, by its subject, its brilliant coloring its excellent finish, and the artistic grouping of its figures, forms a striking picture, suitable for hanging in saloons, and well calculated to draw attention to the plaintiff, whose name is printed in large type beneath the figures as a person engaged in the lager-beer business, and constituting, therefore, a valuable mode of advertising. Among the Germans, and in the lager-beer trade 'Gambrinus' is familiarly known as the inventor of lager beer, while king of Flanders, as the legend goes, who used it first as a potion or draught.

The defendant's chromo, claimed to be an infringement, is a few inches smaller than the first, and presents the same general grouping, expression, and coloring of the figures though having some conspicuous changes. Upon the head of the lager-beer cask the words 'Bock Beer' are conspicuously printed; and the figure of a goat, with its forefeet upon the top of the cask, appears prominently in the foreground beside the king. The troubadour, who in the first picture is reclining upon the ground beside a maid drawing beer at the spigot, is omitted in the defendant's chromo, which also contains at the left a prominent typical figure of 'Brother Jonathan,' who is substituted in the place of a tailor in the first. There are various other minor changes.

Upon the whole, it is plain that the defendant's chromo is formed upon the same general design as the first, although with very important variations, and is an infringement of it, if the first was lawfully copyrighted before any publication of it. The defendant's chromo is designed as a card advertising the sale of 'bock beer,' which is sold mainly in the months of April and May.

From the defendant's affidavits it, however, appears that the complainant's chromo was designed in Europe by G. Bartsch, an alien European artist, whose name is engraved on the face of the print; that in the right-hand corner beneath are printed the words, 'Wittemann Bros. Publishers of Art Lithographs, New York;' that the work is strictly a chromo-lithographic print; that all the complainant's copies of it were printed and completed in Europe, whence it was imported to this city by the complainant, who thereupon undertook to take out a copyright by depositing two copies with the librarian of congress, as above stated, and stamping upon the left-hand corner the words added by the complainant, 'Copyrighted 1880, by D. G. Yuengling, Jr., New York;' that the defendant has long been a designer, and is also engaged in the lager-beer advertising business; that in the summer of 1880, at the book-printer's establishment of Keely & Bartholom, 22 College place, in this city, where he had previously been accustomed to get work done, he was shown a copy of all the colored portion of this chromo, but without the copyright stamp thereon; that he was informed by them at that time that it was a German work, not copyrighted, and had shortly before been imported and received by them from Europe; that he was then allowed to take this copy away with him, and had retained it ever since, and had made his own chromo therefrom, with the variations above pointed out; that he never saw any copy with any copyright stamp upon it, and had no knowledge of any such copyright until the commencement of this suit.

It is urged on the part of the defendant that the plaintiff's chromo is not the subject of a copyright, because it was designed, used, and circulated by him as a gratuitous advertising card for the benefit of his private business as a lager-beer brewer, and not for the instruction or improvement of the public. The case of Cobbett v. Woodward, Law Rep. 14 Eq. 407, relied on by the defendant, was a case where the catalogue of an upholsterer, containing engravings of the articles offered by him for sale and circulated gratuitously, was held not to be the subject of copyright on this ground. A similar decision was made in this court in the case of Collender v. Griffith, 11 Blatchf. 212, concerning engravings of billiard tables offered for sale; but in that case it was held that the engravings were not works of art, and did not have any value or use as such, and that it was a mere mode of advertising the tables for sale. The case of Ehret v. Pierce, 18 Blatchf. 302, (S.C. 10 F. 553,) was decided upon the same principle. The case of Cobbett v. Woodward, supra, has not been followed in England, but was substantially overruled in the subsequent case of Grace v. Newman, Law Rep. 19 Eq. 623.

The plaintiff's chromo in the present case is not a mere engraving or print of any article which the complainant offers for sale. It is a work of the imagination, and has such obvious artistic qualities as, in my judgment, render it fairly a subject of copyright, without regard to the use which the plaintiff has made or may intend to make of it. Where the work in question is clearly one of artistic merit, it is not material, in my judgment, whether the person claiming a copyright expects to obtain his reward directly through a sale of the copies, or indirectly through an increase of profits in his business to be obtained through their gratuitous distribution.

There are several grounds, however, why the preliminary injunction sought in this case should not, I think, be granted.

1. It being conceded that the complainant is not the author or designer of this chromo, it is incumbent upon him to show how he became entitled to any exclusive copyright of it. In Green v. Bishop, 1 Cliff. 186, 198, Clifford, J., says:

'It is undoubtedly true that when a party comes into a court of law or equity seeking protection of a copyright, he must show that he is the author of the work, or that his title is derived from one sustaining that relation to the publication. Little v. Gould, 2 Blatchf. 181. The plaintiff does not show any such derivative title, and it appears that he is not the author.'

The owner or proprietor of a work has not, since the act of 1870 any more than before, in that character alone any right of copyright. It is only to 'authors and inventors,' or to persons representing the author or inventor, that congress is authorized by the constitution to grant a copyright. Const. art. 1, Sec. 8. The right of any other person than the author or inventor must therefore be a purely secondary and derivative one, and in enforcing any alleged copyright such a person must show an exclusive right lawfully derived from the author or inventor; and this the plaintiff has not done. I find no other averment in the papers save that in the bill that on the twenty-third of August, 1880, he was 'the proprietor of said chromo.' This is not enough. It does not show any exclusive right derived from an original author. It appears, in opposition, that the work was designed and printed in Europe by an alien artist, and that copies of this design were imported into this country and came into defendant's hands independently of the complainant. There is no averment either that the design itself was new, or that the lithographic stones for the print were engraved by any person employed by the plaintiff or in his behalf, or that any right of copyright was ever transferred, or intended to be transferred, to the plaintiff by the author or artist. The 'chromo' may be a mere copy of an European painting long since published in Europe, and free to be copied by any one. For aught that appears, the whole design may have been common property for an indefinite period, as would seem to be the case with the typical form of King Gambrinus. The complainant may have been the 'proprietor' of the chromos which he imported, and may have 'produced them at great expense,' and yet have no exclusive right whatever, as between himself and the European artist, to the sole use even of the lithographic stones in Europe for the multiplication of any additional copies, much less to the original design. In that case he could acquire no copyright which would exclude the defendant, or any other person, from availing himself, either...