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Batlin v. Snyder


October 24, 1975


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.

Author: Meskill

Before: OAKES, VAN GRAAFEILAND and MESKILL, Circuit Judges.

MESKILL, Circuit Judge:

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).


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 rationalizes from an operational viewpoint the differences between the patent office and the copyright office. Weir v. Gordon, 111 F.Supp. 117, 123 (E.D.Mich.), aff'd. 216 F.2d 508 (6th Cir., 1954). The patent office provides an elaborate but time-consuming search mechanism designed to prevent infringements or interference and to insure novelty of the idea. The copyright office regulations have no such provisions. Compare 35 U.S.C. Chs. 12 and 13 with 17 U.S.C. and 37 C.F.R. Ch. 1 with 37 C.F.R. Ch. 2. Unless an article does not fall into a copyrightable category it will be entitled to copyright protection if the parties follow the proper procedures.

The primary purpose of copyrights, as mandated by the Constitution, Art. 1, § 8, Cl. 8, is "to promote the Progress of Science and the Useful Arts..."; financial reward is secondary. United States v. Paramount Pictures, 334 U.S. 131, 158 (1947); Twentieth Century Music Corp. v. Aiken, 500 F.2d 127, 130, n. 6 (3d Cir., 1974), cert. denied, 416 U.S. 1067; Berlin v. E. C. Publications, Inc., 329 F.2d 541, 543 (2d Cir., 1964), cert. denied, 379 U.S. 822; Continental Casualty v. Beardsley, supra, 253 F.2d 702, 704, cert. denied, 358 U.S. 816; Becker v. Loews, Inc., 133 F.2d 889, 891 (7th Cir., 1943), cert. denied, 319 U.S. 772. Progress in the arts connotes rapid dissemination. A copyright becomes akin to a notice or a claim for priority amongst creditors. The claims can be staked out rapidly so that articles of culturally perishable content can rapidly enter the stream of commerce. Thus it is possible for one valid copyright to infringe upon another valid copyright. See infra.

In order for copyright protection to have any commercial meaning in this context, however, the standards relating to infringement must be much higher than those relating to mere copyrightability.

In Puddu v. Buonamici Statuary, Inc., 450 F.2d 401, 402 (2d Cir., 1971), Judge Friendly pointed out this other distinction so crucial to our analysis. He noted that the standards for determining whether an object is copyrightable differ from the standards applied to determine whether an object infringes upon a copyright. Cf. Millworth Converting Corporation v. Slifka, supra, 276 F.2d 433; Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., supra, 191 F.2d 99, 102, 104, n. 2; Helm v. Universal Pictures Co., 154 F.2d 480, 488, n. 17 (2d Cir., 1946); Alva Studios, Inc. v. Winniger, 177 F.Supp. 265, 267 (S.D.N.Y., 1959); See Universal Athletic Sales Co. v. Salkeld, supra, 511 F.2d 904, 908. The different levels of creativity to be applied to these two situations can be understood from the nature of the interest protected and the means for effectuating that protection, as provided in the statutes and regulations discussed above.

"The test of copyright infringement is whether similarity between the products would lead 'the average lay observer... [to] recognize [an] alleged copy as having been appropriated from the copyrighted work.'" Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., Inc., 509 F.2d 64, 65 (2d Cir., 1974). Hence there can be an infringement if there is a substantial similarity between the items in question. Id.; Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., supra, 490 F.2d 1092, 1093, cert. denied, 416 U.S. 986. The infringer must act at his peril, because a truly innocent infringement is unlikely. Mazer v. Stein, supra, 347 U.S. 201; H. M. Kolbe Co. v. Armgus Textile Co., supra, 315 F.2d 70, 72. In contradistinction to infringement, an article need only fall into the proper category of articles in order to be copyrightable. Such an article can still constitute an infringement of another copyright. Weir v. Gordon, supra, 111 F.Supp. 117, 123, aff'd. 216 F.2d 508; e.g. Patterson v. Century Productions, Inc., 93 F.2d 489, 491 (2d Cir., 1937), cert. denied, 303 U.S. 655; Harold Lloyd Corp. v. Witwer, supra, 65 F.2d 1, 17, cert. denied, 296 U.S. 669; but see American Code Co. v. Bensinger, 282 F. 829, 833 (2d Cir., 1922). The objective is to progress now and, if necessary, litigate later; let the courts determine which party is entitled to damages should it find infringement. In the meantime, the public culture benefits from progress; the issue of who is entitled to profits should not induce rigidity and slowness in industries and fields naturally subject to great flux.

Consequently, for purposes of copyrightability, the issue of whether an article is an object of art or not narrows to a judgment as to fact, and not a judgment of artistic sensibility. Tennessee Fabricating Co. v. Moultrie Manufacturing Co., supra, 421 F.2d 279, 281, cert. denied, 398 U.S. 928; George Hensher Ltd. v. Restawile Ltd. (1974) 2 All. E.R. 420, 426. The tests imposed for copyrightability, are as indicated by the previous discussion, at best, minimal. Art, for the purposes of copyright law has two requisite elements: creativity and originality. See: United States v. Steffens, supra, 100 U.S. 82, 94 (dictum); Emerson v. Davies, supra, 8 Fed.Cas. 615, 618-21; Donald v. Uarco Business Forms, supra, 478 F.2d 764, 765; Tennessee Fabricating Co. v. Moultrie Manufacturing Co., supra, 421 F.2d 279, 281, cert. denied, 398 U.S. 928; Drop Dead Co. v. S. C. Johnson & Son, Inc., 236 F.2d 86, 92 (9th Cir. 1963); Rushton v. Vitale, supra, 218 F.2d 434, 435; McIntyre v. Double-A Music Corp., 179 F.Supp. 160, 162 (S.D.Cal., 1959); Dunham v. General Mills, Inc., 116 F.Supp. 152, 154 (D.C.Mass., 1953); Nimmer on Copyrights §§ 191, 192. Creativity can be determined from observing the object itself in comparison with others; originality can be gauged from evaluating the process by which the object was made.

Creativity in this context means only that the object created be more than a trivial variation from what existed before. This implies a modicum of novelty. It has been said in many cases that novelty is not required in order to satisfy the requirements for copyrightability. Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1109 (9th Cir., 1970); Donald v. Zack Meyer's T.V. Sales and Service, 426 F.2d 1027, 1029 (5th Cir., 1970), cert. denied, 400 U.S. 992; Peter Pan Fabrics, Inc. v. Dixon Textile Corp., 280 F.2d 800, 802 (2d Cir., 1960); Whitol v. Wells, 231 F.2d 550, 553 (7th Cir., 1956); Mazer v. Stein, supra, 204 F.2d 472, 474, aff'd. 347 U.S. 201, 218; Cf. J. C. Lahore, Art and Function in the Law of Copyright and Designs, 4 Adelaide L.Rev. 183, 200. There have been some cases to the contrary, however. See: Rushton v. Vitale, supra, 218 F.2d 434, 435.*fn15 This apparent conflict can be rationalized, however, to mean that the degree of novelty required for patentability need not be reached for copyrightability. Thomas Wilson & Co. v. Irving J. Dorfman Co., supra, 433 F.2d 409, 411, cert. denied, 401 U.S. 977; Gelles-Widmer Co. v. Milton Bradley Co., supra, 313 F.2d 143, 146, cert. denied, 373 U.S. 913; Mazer v. Stein, supra, 204 F.2d 472, 474 (4th Cir., 1953), aff'd. 347 U.S. 201; National Comics Publications v. Fawcett Publications, Inc., supra, 191 F.2d 594, 599; Riker v. General Electric Co., 162 F.2d 141, 142 (2d Cir., 1947). Since the objects adjudged are cultural commodities, upon which there is often heated debate in a free society, creativity requires only a minor quantum of difference from others before it. After all, cultural progress tends to occur incrementally.

By originality, the process of the creation is analyzed, and the item is not subject to copyrightability unless it had been constructed by a process requiring independent skill, labor and judgment of an individual. United States v. Steffens, supra, 100 U.S. 82, 94 (dictum); Roth Greeting Cards v. United Card Co., supra, 429 F.2d 1106, 1109; Scott v. WKJG, Inc., 376 F.2d 467, 469 (7th Cir., 1967), cert. denied, 389 U.S. 832; Lin-Brook Builders Hardware v. Gertler, 352 F.2d 298, 301 (9th Cir., 1965); Yale University Press v. Row, Peterson & Co., 40 F.2d 290, 292 (S.D.N.Y., 1930); National Institute, Inc. v. Nutt, 28 F.2d 132 (D. Conn., 1928), aff'd. 31 F.2d 236, 237 (2d Cir., 1929). Cf. Columbia Broadcasting System Inc. v. Melody Recordings, Inc., 44 U.S.L.W. 2026 (N.J. App.); Bergstrom, The Literary and Artistic Work in Copyright, 20 Bull. C.R. Soc. 67, 68-69.

The trial court in the instant case found that physical skill was necessary to produce the Snyder bank. From the record, it appears that witnesses for both parties concede that the sculptor needed special skill, training and knowledge, and independent judgment to create the mold. See Mazer v. Stein, supra, 204 F.2d 472, 473, aff'd. 347 U.S. 201; Smith v. George E. Muelbach Brewing Co., 140 F.Supp. 729, 731 (W.D.Mo., 1956). The mold was sculpted independently, from scratch. There was no slavish or mechanical copying. Shapiro, Bernstein & Co., Inc. v. Miracle Record Co., Inc., 91 F.Supp. 473, 474 (N.D.Ill., 1950). With this, the requisite of originality was satisfied. The district court went on to find, however, that the Snyder bank was merely a trivial variation from the basic bank in the public domain. Although this court has the power to independently evaluate the presence or absence of the creative element, we decline to do so. It is not necessary that we reach that issue because the Snyder bank satisfies the criteria for copyrightability in order to qualify as a reproduction of a work of art, as discussed in the following section.


A reproduction of a work of art must satisfy the same standards for copyrightability as must any work of art. However, it would be self-contradictory to require that the reproduction display the same degree of creativity, when compared to the basic work of art, as if it were a conceptually independent production. The very idea of "reproduction" negates, within copyright law, the idea of an increment of difference inherent to the concept of "nontriviality," necessary to the creativity element. Peter Pan Fabrics, Inc. v. Dan River Mills Inc., 295 F.Supp. 1366 (S.D.N.Y., 1969), aff'd. 415 F.2d 1067; H. M. Kolbe Co. v. Armgus Textile Co., 184 F.Supp. 423 (S.D.N.Y., 1960), aff'd.279 F.2d 555 (2d Cir.). That element - creativity - is supplied by the basic underlying work.

It is still requisite that the second element, originality of process, exist, for a reproduction of a work of art to merit copyright protection. As indicated above, Snyder has met his burden in this respect. Since Snyder's bank is entitled to a copyright, the district court erred in holding that Batlin is likely to prevail. On that basis, the court should have denied the injunction.


At a trial on the merits or, alternatively, at proceedings before United States Customs Service, the parties are free to litigate the factual question of infringement.

At this juncture, it should be emphasized that the protection which attached to Snyder's work, as with any work, is limited to its creative increment. The greater the increment, the more protection is merited thereby.*fn16 Thus Snyder is not able to appropriate the exclusive benefit of an article in the public domain, by being the first person to fabricate a slavish copy. In cases such as the instant one, it is the increment of difference from the basic version which is protected. Axelbank v. Rony, supra, 277 F.2d 314, 317; Adventures in Good Eating v. Best Places to Eat, supra, 131 F.2d 809, 813, n. 3; Dorsey v. Old Surety Life Ins. Co., supra, 98 F.2d 872, 873; American Code Co. Inc. v. Bensinger, supra, 282 F. 829, 834; G. P. Putnam's Sons v. Lancer Books, Inc., 239 F.Supp. 782, 785 (S.D.N.Y., 1965); Continental Casualty Co. v. Beardsley, 151 F.Supp. 28, 32 (S.D.N.Y., 1957), modified 253 F.2d 702, cert. denied, 358 U.S. 816; Smith v. George E. Muehlbach Brewing Co., supra, 140 F.Supp. 729, 731. See Morrissey v. Proctor & Gamble Co., 379 F.2d 675, 678 (1st Cir., 1967). Snyder has staked out his claim to an adaptation of, or a reproduction of an object of art within the public domain, as he was entitled under the statutes. Batlin, on the other hand, is not prohibited from using the same basic bank as an inspiration for its product and from acquiring a copyright. Moreover, since the basic bank is in the public domain, the bank which Batlin was prohibited from importing does not infringe upon Snyder's design if it avoids pirating those increments which Snyder added to his original production. There may be many ways in which the changes in Batlin's bank can be clearly distinguished from Snyder's changes from the basic bank. Sunset House Distributing Corp. v. Doran, 304 F.2d 251, 252 (9th Cir., 1962); Dymow v. Bolton, supra, 11 F.2d 690, 691; Allegrini v. DeAngelis, 59 F.Supp. 248 (E.D.Pa., 1945), aff'd. 149 F.2d 815 (3d Cir.); Barton Candy Corp. v. Tell Chocolate Novelties Corp., 178 F.Supp. 577, 581 (E.D.N.Y., 1959). On the merits Batlin may well succeed in making this distinction.

Since the district court based its preliminary injunction upon a finding that the Snyder bank is probably not copyrightable, and we hold otherwise, the injunction is vacated and the cause is remanded for further proceedings not inconsistent with this opinion.

OAKES, Circuit Judge (dissenting):

The majority opinion rendered today eviscerates this circuit's line of cases requiring a modicum of originality for copyrightability and in doing so opens the door to copyrights for slavish copies of any object in the public domain. Incidentally to doing so the majority also totally disregards the substantial evidence supporting Judge Metzner's findings that the likelihood that appellants can show any input of originality to justify their copyright is small since change of material and change in size do not alone render an object copyrightable. The majority opinion cheapens copyrights (and the concept of copyright protection) by making them meaningless, supposedly in the name of "progress in the arts."*fn1 That opinion refers to the "increment of difference" required to supply copyrightability to works of art, but holds, supra at 6371, that the "very idea of reproduction" per se negates the established copyright law requirement that a nontrivial increment of difference exist in a "reproduction" of a work of art when compared with the work of art upon which it is based. Simultaneously, while allowing copyrightability here with no showing below of an "increment of difference,"*fn2 and with no explanation of what features constitute this increment, the majority goes on to say that the protection here attached to appellants' plastic toy bank is "limited to its creative increment" or that "it is the increment of difference from the basic version which is protected." Id. This seems to me to be judicial double-talk. From the holding as well as the reasoning by which it is reached, I dissent.

Judge Metzner found that appellee, L. Batlin & Son, Inc., had shown through the testimony of its expert and through cross-examination of appellants' expert that the appellants' plastic bank did not evince the required "originality" to give ultimate probability of entitlement to copyright protection because it displayed "merely trivial variations" from the well-known antique metal bank now in the public domain from which or from a modern copy of which it was copied, relying, among other authorities, on Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951), and 1 M. Nimmer, The Law of Copyright § 20.3 (1975 ed.). The majority has come to the novel conclusion that "the requisite of originality was satisfied" merely because the district court found that "physical skill" was necessary to create the plastic bank and because, in the majority's view of the record, the person hired to sculpt the plastic mold needed "special skill, training and knowledge, and independent judgment." Supra at 6370. The majority evidently views the requirement that the bank be more than a "trial variation" from the metal bank as part of the "creativity" requirement for works of art which does not apply to reproductions of works of art. Unfortunately, it is clear from the cases that the "trivial variation" standard is the heart of the originality requirement for both categories of works. Judge Metzner was entirely correct in concluding that appellants' argument that physical artistic skill was used in the production of the plastic bank fell short of making the required showing that the work displayed substantial variations from the metal bank.

The majority, in fashioning its unprecedented test that mere special skill and independent judgment suffice for originality in even the only trivially variant products, ignores the substantial evidence that comparatively small artistic skill and little independent judgment was involved in making the plastic bank, other than that skill and judgment required to transfer the metal design into the plastic medium with alterations dictated by the use of a different medium. The quality of artistic labor involved may be a relevant indicator of originality, but appellants' expert indicated that the time required to create the plastic work was a day and a half or two at most. Even where courts have emphasized extraordinary skill and effort as buttressing a finding of originality, these qualities have been characterized in glowing phrases which are distinctly inapposite here. See Millworth Converting Corp. v. Slifka, 276 F.2d 443, 444 (2d Cir. 1960) (fabric designer effort required one month of work to give three-dimensional color effect to flat surface); Alfred Bell & Co. v. Catalda Fine Arts, Inc., supra, 191 F.2d at 104-05 n.22 (mezzotint engraver's art requires "great labor and talent"); Alva Studios, Inc. v. Winninger, 177 F. Supp. 265, 267 (S.D.N.Y. 1959) (exact miniature of Rodin's Hand of God required "great skill and originality").

The polestar test of originality appeared in Chamberlain v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir. 1945):

The first question with which we must deal is that of the validity of the copyright.... Plaintiff [seeking infringement damages] therefore must lose unless he has shown that his work contains some substantial, not merely trivial originality and that defendant sold copies embodying the original aspects of his work.

This test was further elaborated in the leading case of Alfred Bell & Co. v. Catalda Fine Arts, Inc., supra, 191 F.2d at 102-03, where Judge Frank said that "[all] that is needed... is that the 'author' contributed something more than a 'merely trivial' variation, something recognizably 'his own.'"*fn3 This has been echoed in case upon case in this circuit and elsewhere as a requirement of originality.*fn4 To support a copyright, "a copy of something in the public domain" must present a "distinguishable variation." Gerlach-Barklow Co. v. Morris & Bendien, Inc., 23 F.2d 159, 161 (2d Cir. 1927).

Although the originality requirement may be minimal, this "does not prevent the court from concluding as a matter of fact that works may lack even the modicum of originality required." Gardenia Flowers, Inc. v. Joseph Markovits, Inc., 280 F. Supp. 776, 782 (S.D.N.Y. 1968). Here, the appellants' plastic bank was admittedly sculpted into plastic using the more costly, metal Uncle Sam bank in the public domain as a model.*fn5 Even if "[originality] in this context 'means little more than a prohibition of actual copying,'" Rushton v. Vitale, 218 F.2d 434, 435 (2d Cir. 1955), here we have just that.

The plastic bank's variations from the original or the up-dated version of the original also in the public domain consist essentially of three: a reduction in size from eleven to nine inches in height; the use of leaves instead of arrows in the clutches of the eagle at the base; and the joining of Uncle Sam's trousers at the ankle. But even the appellants' expert conceded that the steps performed in the copying of the metal bank into reduced plastic size involved changing some of the designs "in order to fit plastic." The district court refused to dignify these changes as an author's contribution of more than "trivial variation" and consigned the plastic bank to the class of items "slavishly copied" and undeserving of copyright protection. In doing so, Judge Metzner, an experienced district judge with more than a passing acquaintance with the arts, was clearly correct. As he stated,

I am making a finding of fact that as far as I'm concerned, it is practically an exact copy and whatever you point to in this [sic] differences are so infinitesimal they make no difference.

The majority decision, as I have said, cheapens copyrights by making them meaningless. If no originality in terms of variation, but only "physical skill" and "special training" by the author, need be shown as the opinion holds, anyone can copyright anything, calling it a "reproduction of a work of art." The majority, as if to back away from the purport of its decision, then goes on to say rather ambiguously that the protection afforded by the copyright it upholds on the appellants' plastic work is "limited to its creative increment." With no identification of either original or creative "increment" of variation, the protection afforded appellants' reproduction is theoretically zero.

The majority has thus created an irreconcilable incongruity of implication in its holdings. As Nimmer points out,

Finally, it should be noted that copyright in a work of art protects against any substantial copying of the work per se, while copyright in a reproduction of a work of art protects only against the copying of the distinctive features contributed by the copyright owner of the reproduction.

1 M. Nimmer, supra § 20.3, at 95. Since the majority holds that the plastic work qualified as a "reproduction" without the necessity of possessing "distinctive features," the work has no features to be protected, and its copyright is worthless. Since the majority also implicitly holds that the skill necessary to recreate the work in plastic in slightly reduced size is a sufficiently "original" attribute, it may be that the majority has given appellants simultaneously total monopolistic protection against all competitors in the plastic medium. This is but one example of the bizarre contradictions which flow from the majority's treatment of the concept of "non-triviality" as absent in the "originality" requirement.

One could argue, I suppose, that this decision simply carries Mazer v. Stein, 347 U.S. 201 (1954), to its logical, if disputable,*fn6 conclusion. But even while that case held that the statutory terms "works of art" and "reproduction of works of art" - clearly broader than the earlier term "works of the fine arts" - permit copyright of lamp-base statuettes, the Court expressly held that the objects to be copyrightable "must be original, that is, the author's tangible expression of his ideas." 347 U.S. at 214. No such originality, no such expression, no such ideas here appear. It is, I think, not insignificant that the Mazer majority cited for this proposition Burrow-Giles Lithographic Co.v. Sarony, 111 U.S. 53 (1884), which said:

It is, therefore, much more important that when the supposed author sues for a violation of his copyright, the existence of those facts of originality, of intellectual production, of thought, and conception on the part of the author should be proved, than in the case of a patent right.

Id. at 59-60. Whatever the validity of this as a proposition of law, the citation to it speaks in clarion tones to the element of originality missing here, as it is in the majority's analysis.

I will admit that some of our fabric design cases have gone far in upholding on an ad hoc basis copyrights of design copies on a "minimal quantum of originality," but this has been only "where the design printed is itself unmistakably original" and could be filed itself as a "work of art" under Section 5(g) of the Copyright Act, 17 U.S.C. § 5(g). Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092, 1094 (2d Cir. 1974); see also Peter Pan Fabrics, Inc. v. Dan River Mills, Inc., 295 F. Supp. 1366 (S.D.N.Y.), aff'd, 415 F.2d 1007 (1969). It has not been suggested by anyone that the original Uncle Sam bank or the modern metal copy from which appellants' plastic copy was copied, can be copyrighted at this late date.

In the forest of copyright cases referred to by the majority, the progenitor tree of originality has, I fear, been overlooked.

I would affirm the grant of the preliminary injunction.

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