The opinion of the court was delivered by: COXE
This is an action against Fawcett Publications, Inc. (hereinafter referred to as 'Fawcett') and Republic Pictures Corporation and the latter's wholly-owned subsidiary, Republic Pictures, Inc. (both hereafter referred to as 'Republic'), for copyright infringement under the 1909 Copyright Act, as amended, 17 U.S.C.A. § 1 et seq., and for unfair competition. The action was instituted on September 5, 1941, by Detective Comics, Inc. (hereafter referred to as 'Detective') and by Superman, Inc.; they were later merged into National Comics Publications, Inc., which has been substituted as sole plaintiff. An amended complaint was filed in November 1945, but the action was not brought to trial until March 1948. Damages and an injunction are sought because of alleged infringements of the copyrights upon all the issues of two comic magazines published by Detective and Superman, respectively, viz., 'Action Comics' and 'Superman'. It is asserted by plaintiff that there was published in these magazines a large amount of original matter, including 'a variety and series of original cartoons, scenes, characters, incidents and pictorial delineations revolving principally about the figure and character of 'Superman'.'
The infringements alleged in the amended complaint are:
(1) The publication by Fawcett of two magazines, entitled 'Whiz Comics' and 'Captain Marvel Adventures', which contained 'a continuity of comic strips revolving about a principal character known as 'Captain Marvel", which strips were copied from plaintiff's copyrighted material, and the publication by Fawcett of additional magazines, entitled 'Captain Marvel, Jr.', 'Mary Marvel Comics'. 'WOW Comics', 'America's Greatest Comics' and 'Master Comics', likewise containing the continuous strip cartoon known as 'Captain Marvel'.
(2) The production and exhibition throughout the United States during the period of 1940-1941 by Republic of a motion picture serial photoplay entitled 'The Adventures of Captain Marvel'; and
(3) The manufacture and distribution, in connection with these magazines and the motion picture, of certain articles of merchandise, upon which the figure of 'Captain Marvel' was depicted, and which constituted unfair competition.
The principal defenses are non-infringement, that the copyrights are either invalid or have been abandoned, and absence of unfair competition. Republic also asks that, if it is found liable to plaintiff, it have judgment over against Fawcett for the amount thereof under its indemnity agreement with Fawcett.
The 'Action Comics' Magazine.
Detective, which, with its affiliated companies, had been engaged in publishing comic magazines, began the publication in June 1938 of a new monthly comic magazine, entitled 'Action Comics'. Each number contained 64 pages and sold for ten cents a copy. Publication was continued until the time of the trial. Each number was copyrighted in the name of Detective. The magazine contained several comic cartoon strips featuring different characters. A strip consists of a series of panels. The panels contain scenes and incidents revolving about a principal character and, in a so-called balloon, a catch-phrase, or a remark, or a description of the incident represented. Thus the strips may be called short stories in pictorial form.
The leading feature in each number was a comic cartoon strip or story which depicted the figure and actions of an athletic human being, a new character called 'Superman', with distinctive features and a distinctive type of costume, who was portrayed in various scenes and incidents as having and exercising superhuman qualities and being a blessing to mankind as an avenger of all evil, and as being in ordinary life one Clark Kent, a meek newspaper reporter wearing eye glasses. Jerome Siegel and Joseph Shuster, the authors and artists of the strips or stories, produced them under a contract with Detective.
The 'Superman' stories in the first six numbers of 'Action Comics', published from June to November 1938, were reprinted by Detective, with a 1939 copyright date, in Numbers 1 and 3 of the 'Superman' magazine, published in the summer and winter of 1939, respectively. Fawcett insists that this resulted in loss of the copyrights upon the stories. This would be so if it were not for the fact that these two numbers of 'Superman' magazine contained substantial new and original matter, in addition to the 'Superman' stories, which made them 'new works subject to copyright' under Section 6 of the Act. This section contained no provision as to the date of the copyright notice to be used with respect to such 'new works', but it did provide that 'the publication of any such new works shall not affect the force or validity of any subsisting copyright' upon the original works or 'be construed * * * to secure or extend copyright in such original works.'
Manifestly, publication of these two numbers of the 'Superman' magazine with a 1939 copyright date did not result in loss of the copyrights upon the stories originally published in 'Action Comics' with a 1938 date. See West Publishing Co. v. Edward Thompson Co., 2 Cir., 176 F. 833, 837; Adventures in Good Eating v. Best Places to Eat, 7 Cir., 131 F.2d 809, 813; Amdur, Copyright Law & Practice, Chap. XIV, § 29, pp. 495-497; Ball, Law of Copyright and Literary Property, § 76, pp. 173-174.
I find that all the numbers of 'Action Comics' have been properly copyrighted in the name of Detective and that the copyrights upon them, and the 'Superman' stories published in them, have not been lost as the result of republication in the 'Superman' magazine.
In the spring of 1939, Detective began to publish quarterly another comic magazine, entitled 'Superman', which also contained 64 pages and sold for ten cents a copy. Publication of the magazine was continued until the time of the trial. The magazine was devoted exclusively to 'Superman', and its contents were almost entirely either reprints of 'Superman' stories previously published in 'Action Comics' or of 'Superman' stories previously published in newspapers under an agreement between Detective and The McClure Newspaper Syndicate (hereafter referred to as 'McClure'). The first four numbers were copyrighted by Detective. All subsequent numbers were copyrighted by Superman, Inc., which was not incorporated until October 1939. Both companies had the same officers and directors. Starting with Number 6, published in the fall of 1940, the magazine was charged to a bimonthly magazine.
It is contended by plaintiff that Superman, Inc. acquired the right to copyright these later numbers in its own name by virtue of an agreement between the two companies, dated January 18, 1940. By this agreement Detective appointed Superman, Inc., for the period ending March 31, 1945, its 'exclusive agent to exploit 'Superman', the trade-marks and copyrights and/or other rights therein in any manner whatsoever', except that Superman, Inc. should not have the right 'to print, publish or distribute any pictorial or textual sequence containing the likeness of 'Superman', other than through the magazine known as 'Superman'.' The agreement further provided that 'all copyrights, trade-marks and/or other rights with respect to 'Superman' now existing' should remain in Detective and continue to be owned by it, and that 'when any further copyrights, trade-marks * * * or other similar rights are required to carry out the terms of this agreement', they should be obtained by Detective in its own name and the ownership of such rights should remain in it. The agreement contained no provision requiring or authorizing Superman, Inc. to take out copyrights in its own name. Notwithstanding this, Numbers 5 and 6, published in May and August 1940, were copyrighted in the name of Superman, Inc. It seems to have been discovered about August 1940 that this might have been an error. At any rate, Detective wrote Superman, Inc. on August 14, 1940, ratifying and confirming the copyrighting by the latter in its own name of the 'Superman' magazine since January 18, 1940, and agreeing to the amendment of the agreement, as of January 18, 1940, so as to provide that further copyrights should be obtained by Superman, Inc. in its own name and be assigned to Detective upon demand or at the termination of the agreement. This letter could not, however, operate retroactively to validate the copyrights on Numbers 5 and 6. There was some testimony as to an oral modification, made prior to May 1940, of the January 1940 agreement, to the same effect as the August 1940 letter, but I do not credit it.
'Superman' magazine No. 12 was published with the following notice: 'Sept.-Oct. 1941, No. 12. Superman is published bi-monthly by Superman, Inc.., 480 Lexington Ave., New York, N.Y. * * * Entire contents copyrighted by Superman, Inc.' Fawcett's contention that this notice was not a sufficient compliance with the statute, in that the year of publication was omitted from the sentence 'Entire contents copyrighted by Superman, Inc.', cannot be sustained. It was a substantial compliance, and that was enough. Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 2 Cir., 161 F.2d 406, 409, certiorari denied 331 U.S. 820, 67 S. Ct. 1310, 91 L. Ed. 1837; Bentley v. Tibbals, 2 Cir., 223 F. 247, 253.
Nor can Fawcett's further contention be sustained that none of the copyrights upon the 'Superman' magazine taken out in the name of Superman, Inc. is valid. It is argued that Superman, Inc. never became the proprietor of any material for which such copyrights could be taken out by it, but was merely an 'exclusive agent'. But the agreement between it and Detective, as modified on August 14, 1940, expressly authorized it to take out copyrights upon the magazine in its own name. Such an agreement is lawful, and a copyright taken out in accordance therewith is valid. In fact, that is the only way by which the rights of the publisher can be protected. Superman, Inc. holds the legal title to the copyrights as trustee, both for itself as the publisher and for Detective as the legal owner of the copyrighted material. Quinn-Brown Publishing Corp. v. Chilton Co., Inc., D.C.S.D.N.Y., 15 F.Supp. 213.
I find that all the numbers of 'Superman' magazine have been properly copyrighted, either by Detective or by Superman, Inc., except Numbers 5 and 6, published in May and August 1940, and that the copyrights on these two numbers are invalid. This finding is not to be construed as validating copyrights on such strips or stories as were reprints of those previously published without proper copyright notice.
About October 1939, Fawcett, which had previously published only detective stories, began the work of preparing for the publication of a new monthly comic magazine, to be entitled 'Whiz Comics' and to sell for the same price as 'Action Comics'. The first number appeared in January 1940. Each number contained several comic cartoon strips or stories, featuring different characters, the principal one being entitled 'Captain Marvel', who was represented as a human being possessing superhuman attributes and as 'an avenger of evil', and who had a dual personality with one Billy Batson, a ...