Appeal from an injunction granted by the District Court for the Southern District of New York, Charles M. Metzner, J., restraining appellant Synder from enforcing his copyright and interfering with the appellee's importation of a possibly infringing toy bank. The district court found that there was a clear showing of probability of success on the merits because the toy bank was with minor variations taken from the public domain and was not copyrightable. (Reported below at 394 F.Supp. 1389.) Reversed.
Before: OAKES, VAN GRAAFEILAND and MESKILL, Circuit Judges.
The appellants, Jeffrey Snyder and Etna Products Co., Inc. (For the sake of convenience, the appellants herein will be referred to collectively as "Snyder"), appeal from a preliminary injunction in favor of the appellee, L. Batlin & Son, Inc. ("Batlin") compelling Snyder to cancel a recordation of a copyright with the United States Customs Service, and restraining him from enforcing that copyright. The District Court for the Southern District of New York (Metzner, J.), based its action granting the injunction upon a finding that the object of the purported copyright was not entitled to that protection. We reverse, and vacate the preliminary injunction.
In 1886 a design patent was obtained on an eleven-inch high cast iron mechanical Uncle Sam bank. This bank ("basic bank") passed into the public domain when the patent protection expired some time prior to 1909. Act of July 8, 1870, c. 230 § 73, 16 Stat. 210, now 35 U.S.C. § 173. In the spring of 1974, Snyder procured a sculptor to model a nine-inch replica of the original bank. The smaller model was transformed into a mold. From that mold, plastic versions of the Uncle Sam bank ("Snyder bank") were produced in Hong Kong and shipped to this country for sale by Snyder. The nine-inch plastic bank and the original eleven-inch metal bank are generally similar. Each consists of a representation of "Uncle Sam" attired in patriotic garb, standing on a soap box with a carpetbag at his side. Uncle Sam accepts a coin placed into his outstretched right hand, and, when the donor presses a lever, Uncle Sam deftly inserts the coin into his bag. His mouth opens and closes as if to say "thank you."
Snyder obtained a copyright on his version of the bank, claiming it to be a work of art.*fn1 See, e.g., Royalty Designs, Inc. v. Thriftneck Service Corp., 204 F.Supp. 702, 703 (S.D.N.Y., 1962). Subsequently, Batlin attempted to import his own plastic version of the bank which was also produced in Hong Kong. Batlin claims that he was substantially blocked from this endeavor by the United States Customs Service, which, presumably, at Snyder's behest, refused to permit entry of this other bank, pursuant to Customs Regulations which permit the exclusion of pirated or infringing goods, 19 C.F.R. § 133. He further claims that he received a letter from Snyder threatening suit should be persist in marketing the bank. Thereupon, Batlin filed suit in district court, seeking a declaratory judgment and damages from claims of unfair competition and violation of antitrust law, and requesting relief in the form of preliminary and permanent injunctions.*fn2 Batlin alleged that it will suffer irreparable damage by virtue of loss of profits and goodwill, due to its inability to live up to its commitment to deliver orders because of the Customs Service ban on importation of its bank.
This is not the first time that the district court has had to deal with "Uncle Sam's" fate. Etna Products and Jeffrey Snyder, d/b/a J.S.N.Y. v. E. Mishan & Sons, 75 Civ. 428 (S.D.N.Y., 1975) was an earlier case launched by Snyder, wherein he sought a preliminary injunction, claiming copyright infringement and unfair competition. The district court granted relief to Snyder on the unfair competition ground only, finding that it had serious doubts as to whether the copyright could be sustained.*fn3 Consistently with its determination in that case, the same court had difficulty with the copyrightability of Snyder's bank in the instant case. It noted that "to support a valid copyright as a reproduction, only originality is required. Gardenia Flowers, Inc. v. Joseph Markowits, Inc., 280 F.Supp. 776 (S.D.N.Y., 1968); Nimmer on Copyrights, § 20.3." The court went on to say "... [Snyder] contends that the concept of originality embraces a mere copying if it requires artistic skill to achieve the finished product. The [District] Court agrees that in this case a degree of physical artistic skill was necessary to produce the plastic article. What [Snyder 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 [to satisfy the need for copyrightability]." The court went on to conclude that since there was little probability that the Snyder bank would be held to be copyrightable, there was a clear showing that Batlin would probably succeed at a trial on the merits.*fn4 Thereupon, the district court granted Batlin's application for a preliminary injunction, restrained Snyder from enforcing his copyright and ordered him to cancel his recordation of it with the United States Customs Service pending adjudication of the issue on the merits.
Upon appeal, an order granting or denying a preliminary injunction will not lightly be disturbed, unless it contravenes some rule in equity or is the result of improvident exercises of judicial discretion. Meccano Ltd. v. John Wannamaker, New York, 253 U.S. 136, 140 (1920); American Visuals Corp. v. Holland, 219 F.2d 223, 224 (2d Cir., 1955); Joshua Meir Co. v. Albany Novelty Mfg. Co., 236 F.2d 144, 146 (2d Cir., 1956).*fn5
Works within the public domain are rendered noncopyrightable by 17 U.S.C. § 8.*fn6 Although the basic bank is itself excluded from copyright protection, Snyder's reproduction of it is copyrightable if it may be regarded as an adaptation of a work of art in the public domain, 17 U.S.C. § 7.*fn7 It may qualify either as a work of art, 17 U.S.C. § 5(g) as claimed in Snyder's application, or as a reproduction of a work of art, 17 U.S.C.§ 5(h).*fn8 Thus the fact that an idea is in the public domain does not render an expression of that idea uncopyrightable. Donald v. Uarco Business Forms, 478 F.2d 764, 766 (8th Cir., 1973); M. M. Business Forms Corp. v. Uarco, Inc., 472 F.2d 1137, 1139 (6th Cir., 1973); Millworth Converting Corp. v. Slifka, 276 F.2d 443, 445 (2d Cir., 1960) (dictum). See also: American Code Co., Inc. v. Bensinger, 282 F. 829, 834 (2d Cir., 1922); Axelbank v. Rony, 277 F.2d 314, 317 (9th Cir., 1960); Continental Casualty v. Beardsley, 253 F.2d 702 (2d Cir., 1958), cert. denied, 358 U.S. 816; Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir., 1951); Dorsey v. Old Surety Life Ins. Co., 98 F.2d 872, 873 (10th Cir., 1938); Grove Press, Inc. v. Collectors Publication, Inc., 264 F.Supp. 603 (C.D.Cal., 1967); But Cf. Harold Lloyd Corp. v. Witwer, 65 F.2d 1, 17, 18 (9th Cir., 1933), cert. denied, 296 U.S. 669. Hence, the instant appeal presents the question of determining whether this reproduction of a work in the public domain is a fit subject for protection under the copyright laws as a work of art, or as a reproduction of a work of art. The record, fortified by the district court's carefully formulated findings, is sufficiently ripe for appellate review. We must determine whether Uncle Sam can ever attain the status of art, or forever be condemned to an ignoble and unprotected commercial status. Eg. Rushton v. Vitale, 218 F.2d 434, 436 (2d Cir., 1955).
II. "WORK OF ART" AND COPYRIGHTABILITY
The difficulty in fashioning a precise definition for the term "work of art" is manifest. We are faced with the task of formulating an expression sufficient to guide judicial interpretation with consistency, without imposing a new orthodoxy over esthetic sensibility. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903). Webster devotes more than half a column in an attempt to define the term, the pertinent parts of which are reproduced in the margin.*fn9 37 C.F.R. § 202.10, the Copyright Office Regulations, are no more specific in formulating a workable test.*fn10
In order to properly understand the term as it should be applied, we must analyze the purpose of the copyright legislation in the light of history. Metro-Goldwyn-Mayer D. Corp. v. Bijou Theatre Co., 59 F.2d 70, 76 (1st Cir., 1932). The law of copyrights evolved from two roots: common law and legislation. The former concerned the right of an author to initially publish works identical to his own. 2 Blackstone, Commentaries (1766) Ch. 26, § 8. See Public Affairs Associates, Inc. v. Rickover, 284 F.2d 262, 267 (2d Cir., 1960). The latter developed as a means of protecting the correctness of the copies, and not the property rights of the author. It was a type of quality-control device, later extended to protect the printer's rights. Under Henry VIII (1533), it was utilized to protect England's printers from foreign competition.*fn11 Later it was used for the purpose of suppressing sedition. Both, however, concerned the protection of literary works and revolved around the growth of printing.*fn12 R. R. Bowker, Copyright: Its History and Its Law, 8-41; e.g., United States v. Steffens, 100 U.S. 82, 94 (1879).
It is only in the mid-nineteenth century that the copyright protection was extended to works of art and reproductions of them.*fn13 The continued expansion of the ambit of copyright protection is merely a transposition of the same type of protection accorded to written works to different modes of expression. Markham v. A. E. Borden Co., 206 F.2d 199, 202 (1st Cir., 1953) (Dictum); note, Copyright Protection for Mass-Produced, Commercial Products: A Review of the Developments Following Mazer v. Stein, 28 U.Chi.L.Rev. 807, 808. The extension of the law did not increase the scope of the protection afforded; it merely added to the list of subjects covered. In this respect, it is critical to note that the scope of the protection extended only to the particular expression of an idea and never to the idea itself. Mazer v. Stein, 347 U.S. 201, 217 (1954); Baker v. Selden, 101 U.S. 99, 102-103 (1897); Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 906 (3d Cir., 1973); M. M. Business Forms Corp., v. Uarco, Inc., supra, 472 F.2d 1137, 1139; Uneeda Doll Co., Inc. v. P & M Doll Co., Inc., 353 F.2d 788, 789 (2d Cir., 1965); Welles v. Columbia Broadcasting System, 308 F.2d 810, 814 (9th Cir., 1962); Eisenschiml v. Fawcett Publications, 246 F.2d 598, 603 (7th Cir., 1957), cert. denied, 355 U.S. 907; Chamberlin v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir., 1945); R.C.A. Mfg. Co. v. Whiteman, 114 F.2d 86, 90 (2d Cir., 1940), cert. denied, 311 U.S. 712; Guthrie v. Curlett, 36 F.2d 694, 696 (2d Cir., 1929); Dymow v. Bolton, 11 F.2d 690, 691 (2d Cir., 1926); Emerson v. Davies, (1845) 8 Fed. Cas. 615, 618-621 (Story, Justice). The protection of ideas exists, if at all, in patent legislation. Mazer v. Stein, supra, 347 U.S. 201. Hence the term "art" is used in a generic and not qualitative sense: the article to be copyrighted need not constitute a substantive advance in a concept, but it is sufficient if it is an expression of a concept already in existence.
The reason for the distinction between idea and expression is basic to the difference between patent and copyright laws. Patents require a considerable amount of novelty not required by copyrights. Mazer v. Stein, 204 F.2d 472, 474 (4th Cir., 1953), aff'd. 347 U.S. 201; Baker v. Selden, supra, 101 U.S. 99; Wheaton v. Peters, 33 U.S. (8 Peters 591) 223, 234; Thomas Wilson & Co. v. Irving Dorfman Co., 433 F.2d 409, 411 (2d Cir., 1970), cert. denied, 401 U.S. 977; Gelles-Widmer Co. v. Milton Bradley Co., 313 F.2d 143, 146 (7th Cir., 1963), cert. denied, 373 U.S. 913; National Comics Publication v. Fawcett Publications, Inc., 191 F.2d 594, 599 modified 198 F.2d 927 (2d Cir., 1951) (L. Hand, J.). Patents concern generally ideas, inventions which can be applied to an indefinite number of applications. Perris v. Hexamer, 99 U.S. 674 (1878). Copyrights, however, refer to creations which are expressions of ideas. A most basic exposure to the history of art will provide ample proof that while a core concept may remain unchanged, its manifestation in artistic work varies sharply with its cultural and historical surroundings. This is readily apparent in the commercial context: today's fashions are tomorrow's castaways; yesterday's news is old hat (and need not be tomorrow's history). Although the literary expression of news is copyrightable, the factual subject matter is not. International News Service v. Associated Press, 248 U.S. 215, 234 (1918); Chicago Record-Herald Co. v. Tribune Ass'n., 275 F. 797, 798 (7th Cir., 1921). Thus copyrightable works of art often have value for only a short time span, and are useful in a very limited historical and cultural context. See, e.g. Millworth Converting Corporation v. Slifka, supra, 276 F.2d 443, 444; Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092, 1093 (2d Cir., 1974), cert. denied, 416 U.S. 986.*fn14 Consequently, since it is merely the representation of ideas which is protected, and that expression is so time-bound (in an historical and cultural context), only a very low standard must be satisfied for a work to pass muster with respect to copyrightability. Bleistein v. Donaldson Lithographing Co., supra, 188 U.S. 239; Universal Athletic Sales Co. v. Salkeld, supra, 511 F.2d 904, 908; Donald v. Uarco Business Forms, supra, 478 F.2d 704, 765; Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409, 411 (2d Cir., 1970), cert. denied, 401 U.S. 977; H. M. Kolbe Co. v. Armgus Textile Co., 315 F.2d 70, 72 (2d Cir., 1963); Adventures in Good Eating v. Best Places to Eat, 131 F.2d 809, 812 (7th Cir., 1942). This time limitation also ...