HERBERT ROSENTHAL JEWEL. CORP. v. HONORA J. CO

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Docket Number

No. 214, Docket 74-1774.

Attorney(S)

Charles Sonnenreich, New York City, for plaintiff-appellant. Daniel A. Pollack, New York City (Martin I. Kaminsky, Neil D. Thompson, Pollack Singer, New York City, of counsel), for defendants-appellees.

Judges

PER CURIAM:

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Smart Summary

Factual and Procedural Background

Appellant, a jewelry designer and manufacturer, secured a copyright for a gold turtle-shaped pin design on December 4, 1967. The design includes an oval cluster of round precious stones on the turtle's back (carapace). In 1971, defendant Honora Jewelry Co., Inc., controlled by the other defendants, began producing and selling a gold turtle pin with an oval jewel arrangement on its back, similar in appearance to appellant's pin. Appellant filed suit for copyright infringement in 1973 seeking damages, an accounting, injunctive relief and other relief. The district court granted summary judgment dismissing the complaint. This appeal challenges whether the defendants' pin infringes appellant's copyrighted design. The panel before whom the appeal was heard consisted of Judges Smith, Hays and Mansfield.

Legal Issues Presented

Whether plaintiff-appellant's copyright in the design of a gold turtle pin is infringed by a similar-appearing pin made and sold by defendants.
What characteristics of appellant's turtle-pin design are protected by copyright (i.e., the threshold question of the scope of protection: expression versus idea).

Arguments of the Parties

Appellant's Arguments

Appellant conceded the defendant's pin is not an exact duplicate and that there is no evidence of direct copying, but nevertheless asserted that the copyright protection extends to "the essence" of its design.
Appellant identified that "essence" principally as the utilization of an oval cluster of ten jewels on the back of its turtle pin and argued this element is protectible expression.

Defendants' Arguments

Defendants acknowledged knowledge of appellant's pin but contended the allegedly infringing pin was independently created and is sufficiently different in expression to preclude copyright infringement.
Defendants' prior conduct was noted: in 1968 they produced an exact copy that led to a decree enjoining its sale (Herbert Rosenthal Jewelry Corp. v. Grossbardt), but in the present case they asserted independent creation and pointed to numerous differences between the two pins.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Mazer v. Stein, 347 U.S. 201 (1954)	Establishes that copyright protects the expression of an idea, not the idea itself; unlike patents, copyrights do not grant exclusive rights to the art disclosed.	The court relied on this principle to limit the scope of protection: appellant could not exclude all turtle pins simply by copyrighting one turtle design.
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971)	Illustrates that certain jewelry designs (e.g., jeweled bee pins) are "ideas" in the relevant market and thus not the kind of subject matter copyright was meant to monopolize.	The court cited this decision to reinforce that jewelry shapes or common motifs may be unprotectible ideas rather than protectible expression.
Herbert Rosenthal Jewelry Corp. v. Grossbardt, 428 F.2d 551 (2d Cir. 1970)	Demonstrates that an exact copy of a jeweled pin had previously been found infringing and enjoined.	The court used this prior case as factual background showing defendants had previously produced an exact copy in 1968 that resulted in an injunction; it did not change the court's analysis of the present, different pin.
Ideal Toy Corp. v. Fab-Lu, Ltd., 360 F.2d 1021 (2d Cir. 1966)	Articulates the "average lay observer" test for substantial similarity: whether an ordinary observer would recognize the alleged copy as appropriated from the copyrighted work.	The court applied this test to the two turtle pins and concluded the average lay observer would not find the defendant's pin sufficiently similar to warrant a finding of infringement.
Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960)	Also supports use of the average lay observer standard in assessing substantial similarity for copyright infringement.	Combined with Ideal Toy, this precedent undergirded the court's conclusion that differences in expression defeated a finding of substantial similarity under the average lay observer test.

Court's Reasoning and Analysis

The court began by identifying the two-step inquiry: (1) determine the scope of copyright protection by distinguishing protectible expression from unprotectible ideas or motifs, and (2) apply the "average lay observer" test to determine whether the defendant's work appropriated that protectible expression.

On scope, the court emphasized (citing Mazer) that copyright protects only the expression of an idea, not the idea itself. The court reasoned that because turtles in nature share the same general features (upper shell, legs, protruding head, tail), appellant could not, by obtaining a copyright in one turtle design, bar others from producing turtle pins that generally conform to the reptile's natural form. The court also cited Herbert Rosenthal v. Kalpakian to underscore that certain jewelry motifs occupy a broad private preserve that copyright does not intend to monopolize.

Addressing appellant's contention that the "essence" of its design is the oval cluster of ten jewels on the carapace, the court examined whether that element constitutes protectible expression. The court observed that placing jewels on the carapace is an obvious design choice and that an oval cluster of roughly ten gems conforms to the normal shape and vertebral segmentation of a turtle's back (noting that nature's segmentation can be 10–12). Thus the oval arrangement was characterized as dictated by the natural form rather than as an original expressive selection entitled to broad protection.

Applying the average lay observer test (Ideal Toy; Peter Pan), the court compared the two pins (photographic exhibits were submitted). It found numerous conceded and observable differences between appellant's and defendants' pins—differences detailed by the district court and summarized in the record (e.g., differences in gold composition, tail curvature, jewels in eyes, foot shape, presence/absence of a gold base, finishes, head projection, number and form of shell segments, construction in one versus two pieces, thickness/depth, presence/absence of a mouth). Given these differences and the fact that the shared features largely reflect the idea of a turtle and an obvious placement of jewels, the court concluded an average lay observer would not perceive the defendant's pin as appropriated from appellant's expression.

Because there was no genuine dispute as to material facts relevant to infringement and the legal standard applied favored defendants, the court agreed with the district court that summary judgment dismissing the complaint was appropriate.

Holding and Implications

Holding: The court affirmed the district court's grant of summary judgment dismissing appellant's complaint; in other words, the defendant's pin did not infringe appellant's copyrighted design.

Implications: The direct effect is dismissal of appellant's infringement claim and denial of the damages, accounting, injunctive and other relief sought. The opinion emphasizes the limitation that copyrights protect expression, not ideas, and applies the average lay observer test to reject a finding of substantial similarity in this case. The opinion does not announce a novel legal rule or broader legal precedent beyond applying established authorities to the particular facts; no new precedent was set by this per curiam decision.

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HERBERT ROSENTHAL JEWELRY CORPORATION, PLAINTIFF-APPELLANT, v. HONORA JEWELRY CO, INC., ET AL., DEFENDANTS-APPELLEES.

PER CURIAM:

The sole issue on this appeal is whether plaintiff-appellant's copyright of a design for a gold jeweled pin in the shape of a turtle is infringed by a similar-appearing pin made and sold by defendants. We agree with the district court's holding that it was not infringed and affirm its order granting summary judgment dismissing the complaint which sought damages, an accounting, injunctive and other relief.

On December 4, 1967, appellant, a designer and manufacturer of jewelry, acting in apparent compliance with the copyright laws, 17 U.S.C. § 1, et seq., secured the issuance by the Register of Copyrights of a copyright of a design of its gold pin, which is in the shape of a turtle and bears an oval cluster of round precious stones on the back shell, or carapace, of the turtle. Some time in 1971 defendant Honora Jewelry Co., Inc. ("Honora"), which is controlled by the two other defendants, began producing and selling a gold turtle pin with jewels in an oval arrangement on its back, similar in appearance to appellant's pin. In 1973 appellant brought the present suit for infringement.

Appellant concedes that Honora's pin is not an exact duplicate of its piece and that appellant does not have any evidence of direct copying by defendants. Defendants, while admitting that they knew of appellant's pin and, indeed, had in 1968 produced an exact copy which led to the issuance of a decree enjoining its sale as an infringement, see Herbert Rosenthal Jewelry Corp. v. Grossbardt, 428 F.2d 551 (2d Cir. 1970), contend that the alleged infringing pin in the present case was independently created and is sufficiently different from appellant's pin to preclude the possibility of copyright infringement.

A comparison of the two pins, which were submitted to us upon oral argument and which are shown in photographic exhibits, discloses that, although there are numerous differences between the two, which have been detailed by the district court, each conforms generally to the shape of a turtle as that reptile appears in nature, with upper shell, legs, protruding head and tail. Each also bears an oval cluster of jewels on its back.

The threshold question is what characteristics of appellant's design have gained copyright protection. Since all turtles are created more or less along the same lines, appellant cannot, by obtaining a copyright upon one design of a turtle pin, exclude all others from manufacturing gold turtle pins on the ground that they are substantially similar in appearance. Clearly, a copyright does not offer protection of such breadth. "Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea — not the idea itself," Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954). In Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971), a case involving a claimed infringement of a jeweled bee pin produced by these same defendants, the court said:

"We think the production of jeweled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an `idea' that defendants were free to copy." ( 446 F.2d at 742).

Appellant contends that, even assuming the foregoing limitations upon the scope of protection offered by its copyright, the protection nevertheless extends to "the essence" of its design, which it describes as consisting principally of the utilization of an oval shaped cluster of 10 jewels on the back of its turtle.

The test of copyright infringement is whether the similarity between the products would lead "the average lay observer . . . [to] recognize the alleged copy as having been appropriated from the copyrighted work," Ideal Toy Corp. v. Fab-Lu, Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966); Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). Applying this test here, the district court concluded that the average layman would not find sufficient similarity in the parties' particular expressions of the idea of a jeweled turtle pin to warrant a finding of infringement. We agree.

Going beyond the initial observation that both pins are turtles and both are jeweled, we believe the average layman would indeed detect numerous differences, the existence of which are conceded by appellant's President, which tend to eliminate any substantial similarity of protected expression. The idea of placing jewels on the back of the carapace is rather obvious. Although the oval arrangement of 10 gems might at first blush appear to possess individuality of expression, further observation discloses that it merely conforms to the normal shape of the turtle's back and the pattern of its vertebrae segments, of which there are in nature not less than 10 nor more than 12. Accordingly, there being no dispute as to material factual issues, we agree with the district court's conclusion that there was no copyright infringement and affirm its order granting summary judgment dismissing appellant's complaint.

The differences between the two pins were described by Judge Brieant as follows:

"He [appellant's President] testified that defendant's pin, which he claims infringes, was lighter, that it was not made of nugget gold, but a reasonable imitation thereof, that the turtle's tail on Rosenthal's pin was straight, while the tail on the turtle comprising defendant's pin was somewhat curved. Plaintiff's has jewelry stones in the eyes, and the defendant's pin does not. Plaintiff's pin has flat, or paddle type feet, while defendant's pin indicates toe differentiations. Plaintiff's pin has a gold base holding it together, and defendant's pin has no such base. Plaintiff's pin has a matted finish on the head of the turtle, while defendant's turtle head has a lined finish, but Mr. Rosenthal asserted that this difference in the finish was not observable to the naked eye.

"Plaintiff's turtle head comes out straight from the body, while the head on defendant's pin protrudes from the shell of the turtle at an angle from the body. There are twenty-seven little nubs or sections in the shell of plaintiff's, while defendant's has only ten rounded sections with straight lines. The body of plaintiff's pin consists of two pieces, with the top soldered onto the bottom frame, while defendant's appears to have been manufactured in a single piece. Defendant's pin is half the thickness or depth of plaintiff's pin (8 millimeters vs. 4 millimeters). Plaintiff's pin has a line for the mouth of the turtle, and defendant's pin has no mouth on the turtle."