Zachary v. Western Publishing Co.

• Decision Date: 15 December 1977
• Citation: 143 Cal.Rptr. 34,75 Cal.App.3d 911
• Court: California Court of Appeals Court of Appeals
• Parties: , 196 U.S.P.Q. 690 Rex ZACHARY, Plaintiff and Appellant, v. WESTERN PUBLISHING COMPANY, INC., Defendant and Respondent. Civ. 40149.

Page 34

143 Cal.Rptr. 34

75 Cal.App.3d 911, 196 U.S.P.Q. 690

Rex ZACHARY, Plaintiff and Appellant, v. WESTERN PUBLISHING COMPANY, INC., Defendant and Respondent.

Civ. 40149.

Court of Appeal, First District, Division 2, California.

Dec. 15, 1977.

As Amended on Denial of Rehearing Jan. 13, 1978.

Hearing Denied Feb. 9, 1978.

Henry G. Kohlmann, San Mateo, for plaintiff and appellant.

Ropers, Majeski, Kohn, Bentley & Wagner, John M. Bentley, Redwood City, for defendant and respondent; John M. Rommel, Beveridge, DeGrandi, Kline & Lunsford, Washington, D. C., of counsel.

TAYLOR, Presiding Justice.

This is an appeal by Rex Zachary (Zachary), ¹ the inventor, from an order granting Western Publishing Company's motion for a summary judgment and dismissing Zachary's action for general and punitive damages and injunctive relief for infringement of his common law copyright in the design and drawings for a kite. Zachary's kite, in the nick of time, ² has brought before this court a question of law never before faced by a California court of record: whether the federal government's grant to Zachary of a utility ³ patent constituted a "publication" that deprived Zachary of his common law copyright in the descriptions and diagrams in his patent application. For the reasons set forth below, we have concluded that the order must be reversed.

The facts are not in dispute. ⁴ On November 7, 1961, Zachary received Patent No. 3,007,659 for a novel kite. ⁵ Zachary's patent will expire on November 7, 1978. To obtain the patent, Zachary was required to submit drawings and descriptions of his kite to the U. S. Patent Office (35 U.S.C.A., §§ 111, 112, 113). On grant of the patent, Zachary's drawings and descriptions were reprinted in the Official Gazette and distributed to some 6,000 subscribers to that journal, as provided by 35 United States Code Annotated, section 11, subdivision (a). In addition, the Patent Office, pursuant to 37 Code of Federal Regulations, section 1.11, made Zachary's patent available to the general public for sale and permitted copies to be made in the general search room and distributed to public libraries throughout the United States.

Prior to the expiration of the patent, without Zachary's consent or permission, Western allegedly copied Zachary's drawings and descriptions and reprinted them in one of its commercial publications. Western's book indicated that the kite had been invented and patented by Zachary, and suggested that the reader try to build a kite from Zachary's design and drawings.

Thereafter, Zachary filed the instant action against Western ⁶ for infringement of his common law copyright, seeking general damages for reasonable royalties, as well as punitive damages and injunctive relief. After Western moved for summary judgment, the parties stipulated that the only issue was whether the securing of a patent by Zachary was a "publication" which divested him of his common law copyright for the drawings and description. Zachary then filed a motion for partial summary judgment on the issue of liability.

Both motions were heard on June 10, 1976. In granting Western's motion and denying Zachary's, the trial court ruled that "a United States patent is a general publication without restriction as to persons and purpose; and, save for the rights of the owner thereof under the patent laws of the United States, everything disclosed in the patent is a part of the public domain " (emphasis added). The court then concluded that, therefore, Western may use and reproduce Zachary's kite plans without responsibility or liability to Zachary pursuant to Civil Code section 983 1] Preliminarily, we turn to Western's contention that since the federal government has preempted the field of patents and copyrights, the California courts do not have jurisdiction of the subject matter. We note that Zachary's action was for infringement of his common law copyright, pursuant to state law, not a federal statutory copyright. ⁷

The applicable federal statute, 28 United States Code Annotated, section 1338, provides, in pertinent part: "(a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trade-marks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.

"(b) The district courts shall have original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent, plant variety protection or trade-mark laws." (Emphasis added.)

Section 1338 does not preclude an action based upon a common law copyright ⁸ granted by state law; the statute must be read in conjunction with 17 United States Code Annotated, section 2, set forth below, ⁹ which expressly negates any Congressional intent to preempt the power of the states to provide for and regulate common law copyrights. As indicated above, at footnote 2, in contrast, the new Federal Copyright Law expressly preempts state law governing common law copyrights.

The characterization of the action as a patent or nonpatent suit within the meaning of section 1338 turns on the form in which the plaintiff has chosen to cast his complaint (Koratron Company v. Deering Milliken, Inc. (9th Cir. 1969) 418 F.2d 1314, 1316-1317).

Here, Zachary's action is based upon California law governing common law copyrights, as codified in Civil Code section 980 ¹⁰ et seq. The complaint did not allege that Zachary possessed a claim under the federal statutory copyright act (17 U.S.C.A., § 1 et seq.), nor did it set forth any facts to support such a claim; Western also does not assert that Zachary has complied with the federal statutory prerequisites to maintain an action for copyright infringement pursuant to 17 United States Code Annotated, sections 12 and 13 (Hearst Corporation v. Shopping Center Network, Inc., D.C., 307 F.Supp. 551, 556).

We think that the jurisdictional question Western raises was settled by our Supreme Court in Farmland Irrigation Co. v. Dopplmaier, 48 Cal.2d 208, 308 P.2d 732; Justice Traynor said at pages 216-217, 308 P.2d at page 737: "Every action that involves, no matter how incidentally, a United States patent is not for that reason governed exclusively by federal law. The police power of the states, for example, has long been held to include reasonable regulation of the manufacture and sale of patented articles dangerous to public safety (citation), and regulation of the transfer of patent rights to prevent fraud. (Citation.) A patent is not granted without reference to the general powers the states possess over their domestic affairs.

"2] It has been established by a long line of cases, moreover, that an action to set aside, specifically enforce, or recover royalties on a patent license contract is not an action arising under the patent laws of the United States for the purpose of determining the exclusive jurisdiction of the federal courts. (Citations.) State courts have jurisdiction over such actions, and in the absence of diversity of citizenship it is exclusive ¹¹ of the federal courts. (Citations.)" At oral argument, Western maintained that Kewanee Oil Company v. Bicron Corporation, 416 U.S. 470, 94 S.Ct. 1879, 40 L.Ed.2d 315, precluded our jurisdiction. We do not agree. ¹²

Western challenges not only the subject matter jurisdiction of this court, but also argues that we cannot consider the issue of state common law copyright infringement, as this necessarily involves a consideration of the purpose, effect, coverage and "publication" of Zachary's patent and thereby infringes on the exclusive jurisdiction of the federal courts. The absurdity of this argument, which flies in the face of Farmland Irrigation and Koratron, supra, 418 F.2d 1314, as well as Smith v. Paul, supra, 174 Cal.App.2d 744, does not require extensive discussion here, as it begs the very issue presented, namely, whether Zachary's patent grant constituted a common law "publication." The trial court concluded that Zachary's patent was a "general publication" by which Zachary forfeited all of his common law copyrights pursuant to state law. This conclusion is contrary to section 2 of the Federal Copyright Act quoted above at footnote 7. It also flies in the face of 17 United States Code Annotated, section 8, which provides, so far as pertinent: "The publication or republication by the Government, either separately or in a public document, of any material in which copyright is subsisting shall not be taken to cause any abridgement or annulment of the copyright or to authorize any use or appropriation of such copyright material without the consent of the copyright proprietor." Thus, the language of section 8, although not covering the point precisely, suggests a statutory policy contrary to Western's theory on this appeal.

Also analogous are cases such as American Tobacco Co. v. Werckmeister, 207 U.S. 284, 28 S.Ct. 72, 52 L.Ed. 208, which hold that the public exhibition of a work of art is not a publication that will protect against other types of infringements. As indicated in American Tobacco, supra, page 293, 28 S.Ct. 72, the purpose of the federal copyright law is not so much the protection and control of the visible thing, but to secure to the inventor a monopoly for a limited time of the right to publish the production that is the result of the inventor's thought.

3] We conclude, therefore, that since Zachary's action arises under California law governing common law copyrights and not under federal patent or copyright law, we have jurisdiction.

In this state, the basic principles governing "common law" copyright have been codified in Civil Code section 980 et seq. Section 980 provides: "(a) The author or proprietor of any composition in letters or art has an exclusive ownership in the representation or expression...