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Docket Number

No. 75 Civ. 2036.

Attorney(S)

Jacobs Jacobs, New York City, for plaintiff; Mark H. Sparrow, New York City, of counsel. Ostrolenk, Faber, Gerb Soffen, New York City, for defendants Jeffrey Snyder, d.b.a. JSNY, Etna Products Co., Inc.; Robert C. Faber, New York City, of counsel. Paul J. Curran, U.S. Atty., Southern District of New York, New York City, for United States Customs Service; Patrick Barth, Asst. U.S. Atty., of counsel.

Judges

Charles Miller Metzner

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Smart Summary

Case Summary: L. Batlin Son, Inc. v. Jeffrey Snyder, d.b.a. JSNY, et al. (S.D.N.Y. May 12, 1975)

Factual and Procedural Background

Plaintiff L. Batlin Son, Inc. moved for a preliminary injunction seeking to compel defendants Jeffrey Snyder (d.b.a. JSNY) and Etna Products, Inc. to cancel the recordation of Copyright No. GP95881 with the United States Customs Service so that plaintiff's product could be admitted into the United States.

At an evidentiary hearing the court examined: (1) a cast iron "Uncle Sam Mechanical Bank" that was admitted to be in the public domain; (2) defendants' copyrighted plastic version of the bank, which reproduces the cast iron version but reduces its height from approximately eleven inches to approximately nine inches with trivial variations; and (3) plaintiff's identical plastic bank, manufactured abroad, which defendants allege infringes their copyright and which was being shipped into the country in quantity.

The United States Customs Service moved to dismiss the complaint. The opinion resolves these motions and addresses the legal sufficiency of the defendants' claimed copyright.

Legal Issues Presented

Whether the plaintiff made the clear showing of probability of success on the merits required for a preliminary injunction in a copyright case.
Whether defendants' claimed copyright in the plastic reproduction of a public-domain cast-iron bank is valid — specifically, whether the plastic reproduction exhibits the requisite originality (i.e., more than a merely trivial variation) to sustain a copyright.
Whether the United States Customs Service's motion to dismiss the complaint should be granted.

Arguments of the Parties

Plaintiff's Arguments

Plaintiff sought a preliminary injunction to compel cancellation of the defendants' copyright recordation with U.S. Customs so plaintiff's imported product could enter the country.
At the hearing plaintiff presented the cast iron original (in the public domain) and plaintiff's plastic product identical to defendants' plastic product, arguing the defendants' copyright should not prevent importation.

Defendants' Arguments

Defendants asserted they hold a valid copyright in their plastic reproduction of the cast iron bank and that plaintiff's imported plastic banks infringe that copyright.
Defendants contended that a reproduction may be copyrightable based on originality even if it is a reduction or close copy, arguing that the artistic skill required to produce the plastic article supports originality.
Defendants relied on Alva Studios, Inc. v. Winninger (the "Rodin's Hand of God" case) as an example where a scale reduction was held copyrightable because of the skill and originality involved.

Table of Precedents Cited

Precedent / Authority	Rule or Principle Cited For	Application by the Court
Robert Stigwood Group Ltd. v. Sperber, 457 F.2d 50 (2d Cir. 1972)	Standard for granting a preliminary injunction in copyright cases: requires a clear showing of probability of success on the merits.	Cited as authority for the injunctive standard applicable to the plaintiff's motion.
Concord Fabrics, Inc. v. Marcus Brothers Textile Corp., 409 F.2d 1315 (2d Cir. 1969)	Standard for preliminary injunction in copyright cases (same principle).	Cited as supporting authority for the required showing for preliminary injunctive relief.
Uneeda Doll Co. v. Goldfarb Novelty Co., 373 F.2d 851 (2d Cir. 1967)	Standard for preliminary injunction in copyright cases (same principle).	Cited with other Second Circuit cases to state the standard for injunctive relief.
Etna Products Co., Inc. v. E. Mishan Sons, 75 Civ. 428 (S.D.N.Y. Feb. 13, 1975)	District court decision in which the court previously expressed its view on the probability that defendants' copyright would be found valid.	The court reaffirmed its prior holding that there was little probability defendants' copyright would be found valid on the merits.
Gardenia Flowers, Inc. v. Joseph Markovits, Inc., 280 F. Supp. 776 (S.D.N.Y. 1968)	Legal proposition that to support a valid copyright as a reproduction of a work of art, only originality is required.	Cited to accept the proposition that originality, not novelty, is the requirement for copyrightability of reproductions.
Nimmer on Copyrights, § 20.3 (1963) (treatise)	Authoritative statement on the originality requirement for copyright.	Cited to support the legal proposition that originality is the relevant threshold for copyrightability of reproductions.
Alfred Bell Co. v. Catalda Fine Arts, 191 F.2d 99 (2d Cir. 1951)	Definition of "originality" in reproduction cases — the author must contribute something more than a "merely trivial" variation; originality means little more than prohibition of actual copying.	Quoted at length and applied to conclude that the defendants' variations were only trivial and insufficient to establish the requisite originality.
Irving J. Dorfman Co. v. Borlan Industries, Inc., 309 F. Supp. 21 (S.D.N.Y. 1969)	Authority for the proposition that an individual (here, Snyder) may be an "author" under the copyright laws.	Cited to support the court's statement that defendant Snyder qualifies as an author within the meaning of the copyright law.
Alva Studios, Inc. v. Winninger, 177 F. Supp. 265 (S.D.N.Y. 1959)	Holds that a one-half size reproduction of Rodin's "Hand of God" was copyrightable because reduction required "great skill and originality."	Recognized by the court as defendant's principal authority but distinguished on the ground that the level of input and complexity in the Rodin case was greater than in the present case.

Court's Reasoning and Analysis

The court began by stating the governing standard for a preliminary injunction in copyright cases: the movant must clearly show a probability of success on the merits, citing Second Circuit decisions.

The court reaffirmed an earlier decision (Etna Products Co. v. E. Mishan Sons) expressing its view that there was little probability that the defendants' copyright would be found valid at trial.

The court accepted the defendants' legal premise that originality is the requirement for copyrightability of a reproduction, citing Gardenia Flowers and Nimmer. It then closely examined the nature and degree of originality required under Alfred Bell Co. v. Catalda Fine Arts, which the court quoted: originality requires that the author contribute "something more than a 'merely trivial' variation" and that originality "means little more than a prohibition of actual copying."

Applying that test to the evidence, the court found that although some physical artistic skill was required to make the defendants' plastic article, that skill did not contribute a legally significant originality to the work. The variations from the cast iron original were characterized as trivial; the mere need for artistic skill in execution was insufficient to establish the required originality.

The court considered defendants' reliance on Alva Studios v. Winninger (the Rodin case), which upheld copyright for a scale reduction due to the complexity and skill involved, but concluded that the present case did not involve comparable complexity or input and thus was distinguishable.

The court also noted that defendants attempted at the hearing to demonstrate substantial differences between the iron and plastic articles, but the court found those differences insufficient as a matter of law to establish originality beyond a merely trivial variation.

On the procedural motions, the opinion expressly states that "The motion by the United States Customs Service to dismiss the complaint is granted."

Holding and Implications

Holding: The court granted the motion by the United States Customs Service to dismiss the complaint.

Implications:

The court found little probability that defendants' claimed copyright would be held valid on the merits because the differences between the defendants' plastic bank and the public-domain cast iron original were only trivial and did not meet the originality requirement as articulated in Alfred Bell.
The direct procedural consequence explicitly stated in the opinion is that the Customs Service's motion to dismiss was granted. The opinion contains no extended discussion of broader legal consequences or of the issuance of a preliminary injunction in favor of the plaintiff; the court reiterated its view that the defendants' copyright was unlikely to survive a merits determination.
No new broad precedent was announced beyond the court's application and reaffirmation of existing principles regarding originality in reproduction cases; the court distinguished the facts of this case from the Rodin reduction case cited by defendants.

This summary is derived exclusively from the text of the opinion provided.

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L. BATLIN SON, INC., Plaintiff, v. Jeffrey SNYDER, d.b.a. JSNY, et al., Defendants.

METZNER, District Judge:

Plaintiff in this action moves for a preliminary injunction to compel defendants Jeffrey Snyder, doing business as JSNY, and Etna Products, Inc., to cancel the recordation of Copyright No. GP95881 with defendant United States Customs Service, thereby allowing the entry of plaintiff's product into this country.

At the evidentiary hearing on the motion, the court was shown a cast iron "Uncle Sam Mechanical Bank," admittedly in the public domain, and defendants' plastic version of the bank on which they have a copyright. The latter reproduces the former except that it proportionally reduces the height from approximately eleven inches to approximately nine inches with trivial variations. Plaintiff manufactures outside the United States an identical plastic bank which, it is alleged by defendants, infringes their valid copyright, and which is presently in the process of being shipped into this country in quantity.

In copyright cases, the standard for granting a preliminary injunction is a clear showing of probability of success on the merits. Robert Stigwood Group Ltd. v. Sperber, 457 F.2d 50 (2d Cir. 1972); Concord Fabrics, Inc. v. Marcus Brothers Textile Corp., 409 F.2d 1315 (2d Cir. 1969); Uneeda Doll Co. v. Goldfarb Novelty Co., 373 F.2d 851 (2d Cir. 1967).

I have already held in Etna Products Co., Inc. v. E. Mishan Sons, 75 Civ. 428 (S.D.N.Y. February 13, 1975), that I find little probability that defendants' copyright will be found valid in a trial on the merits. I reaffirm that opinion here.

The court agrees with the legal proposition advanced by the defendants that to support a valid copyright as a reproduction of a work of art, only originality is required. Gardenia Flowers, Inc. v. Joseph Markovits, Inc., 280 F. Supp. 776 (S.D.N.Y. 1968); Nimmer on Copyrights, § 20.3 (1963).

In Alfred Bell Co. v. Catalda Fine Arts, 191 F.2d 99 (2d Cir. 1951), in which the court defined originality in a reproduction case, the court stated (at pp. 102-03):

"`Original' in reference to a copyrighted work means that the particular work `owes its origin' to the `author.' No large measure of novelty is necessary. . . .

. . . . . .

All that is needed to satisfy both the Constitution and the statute is that the `author' contributed something more than a `merely trivial' variation, something recognizably `his own.' Originality in this context `means little more than a prohibition of actual copying.' No matter how poor artistically the `author's' addition, it is enough if it be his own." (Emphasis added.)

There is no question that defendant Snyder is an author within the meaning of the copyright laws. See Irving J. Dorfman Co. v. Borlan Industries, Inc., 309 F. Supp. 21 (S.D.N.Y. 1969).

Defendants contend that the concept of originality embraces a mere copying if it requires artistic skill to achieve the finished product. The court agrees that in this case a degree of physical artistic skill was necessary to produce the plastic article. What defendant overlooks is that this artistic skill must contribute to the work. It must be more than a "merely trivial variation," which is all that is present here. The need for artistic skill in the execution of the copy is not sufficient.

Defendants rely heavily on the "Rodin's Hand of God" case, Alva Studios, Inc. v. Winninger, 177 F. Supp. 265 (S.D.N.Y. 1959). In that case the court found a one-half size reproduction of Rodin's famous work to be copyrightable. The court held:

"In a work of sculpture, this reduction requires far more than an abridgement of a written classic; great skill and originality is called for when one seeks to produce a scale reduction of a great work with exactitude." ( Id. at 267.)

Even if this court were prepared to accept this decision, the complexity referred to distinguishes that case from the case at bar. Here, no such level of input is reached. Interestingly enough, defendants went to great pains on the hearing to prove that there were substantial differences between the iron and the plastic articles.

The motion by the United States Customs Service to dismiss the complaint is granted.

Motion granted.

Settle order.

L. BATLIN SON, INC. v. SNYDER, (S.D.N.Y. 1975)