decided: April 12, 1976; As Amended May 26, 1976.
Appeal from an injunction entered by the United States District Court for the Southern District of New York, Charles M. Metzner, Judge, restraining appellants from enforcing a copyright and interfering with the appellee's importation of an allegedly infringing mechanical toy bank. The district court found that there was a clear showing of probability of success on the merits because appellants' toy bank was only, with purely trivial variations, a copy of an antique bank long in the public domain and therefore in all probability not copyrightable. 394 F. Supp. 1389 (S.D.N.Y. 1975). A divided panel of this court reversed. On rehearing en banc the court of appeals affirmed the grant of a preliminary injunction.
Kaufman, Chief Judge, and Feinberg, Mansfield, Mulligan, Oakes, Timbers, Gurfein, Van Graafeiland, and Meskill, Circuit Judges. Meskill, Circuit Judge (dissenting): (with whom Judges Timbers and Van Graafeiland concur).
Appellants Jeffrey Snyder and Etna Products Co., Inc., his licensee, appeal from a preliminary injunction granted L. Batlin & Son, Inc. (Batlin), compelling appellants to cancel a recordation of a copyright with the United States Customs Service and restraining them from enforcing that copyright. The district court held, 394 F. Supp. 1389 (S.D. N.Y. 1975), as it had previously in Etna Products Co. v. E. Mishan & Sons, 75 Civ. 428 (S.D.N.Y. Feb. 13, 1975), that there was "little probability" that appellants' copyright "will be found valid in the trial on the merits" on the basis that any variations between appellants' copyrighted plastic bank and a cast iron bank in the public domain were merely "trivial," and hence appellants' bank insufficiently "original" to support a copyright. 394 F. Supp. at 1390, citing Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951). We agree with the district court and therefore affirm the judgment granting the preliminary injunction.
Uncle Sam mechanical banks have been on the American scene at least since June 8, 1886, when Design Patent No. 16,728, issued on a toy savings bank of its type. The basic delightful design has long since been in the public domain. The banks are well documented in collectors' books and known to the average person interested in Americana. A description of the bank is that Uncle Sam, dressed in his usual stove pipe hat, blue full dress coat, starred vest and red and white striped trousers, and leaning on his umbrella, stands on a four- or five-inch wide base, on which sits his carpetbag. A coin may be placed in Uncle Sam's extended hand. When a lever is pressed, the arm lowers, and the coin falls into the bag, while Uncle Sam's whiskers move up and down. The base has an embossed American eagle on it with the words "Uncle Sam" on streamers above it, as well as the word "Bank" on each side. Such a bank is listed in a number of collectors' books, the most recent of which may be F. H. Griffith, Mechanical Banks (1972 ed.) where it was listed as No. 280, and is said to be not particularly rare.
Appellant Jeffrey Snyder doing business as "J.S.N.Y." obtained a registration of copyright on a plastic "Uncle Sam bank" in Class G ("Works of Art") as "sculpture" on January 23, 1975. According to Snyder's affidavit, in January, 1974, he had seen a cast metal antique Uncle Sam bank with an overall height of the figure and base of 11 inches.*fn1 In April, 1974, he flew to Hong Kong to arrange for the design and eventual manufacture of replicas of the bank as Bicentennial items, taking the cast metal Uncle Sam bank with him. His Hong Kong buying agent selected a firm, "Unitoy," to make the plastic "prototype" because of its price and the quality of its work. Snyder wanted his bank to be made of plastic and to be shorter than the cast metal sample "in order to fit into the required price range and quality and quantity of material to be used." The figure of Uncle Sam was thus shortened from 11 to nine inches, and the base shortened and narrowed. It was also decided, Snyder averred, to change the shape of the carpetbag and to include the umbrella in a one-piece mold for the Uncle Sam figure, "so as not to have a problem with a loose umbrella or a separate molding process." The Unitoy representative made his sketches while looking at the cast metal bank. After a "clay model" was made, a plastic "prototype" was approved by Snyder and his order placed in May, 1974. The plastic bank carried the legend "(c) Copyright J.S.N.Y." and was assertedly first "published" on October 15, 1974, before being filed with the Register of Copyrights in January, 1975.
Appellee Batlin is also in the novelty business and as early as August 9, 1974, ordered 30 cartons of cast iron Uncle Sam mechanical banks from Taiwan where its president had seen the bank made. When he became aware of the existence of a plastic bank, which he considered "an almost identical copy" of the cast iron bank, Batlin's trading company in Hong Kong procured a manufacturer and the president of Batlin ordered plastic copies also. Beginning in April, 1975, Batlin was notified by the United States Customs Service that the plastic banks it was receiving were covered by appellants' copyright. In addition the Customs Service was also refusing entry to cast iron banks previously ordered, according to the Batlin affidavit. Thus Batlin instituted suit for a judgment declaring appellants' copyright void and for damages for unfair competition and restraint of trade. The sole question on this appeal is whether Judge Metzner abused his discretion in granting Batlin a preliminary injunction. We find that he did not.
This court has examined both the appellants' plastic Uncle Sam bank made under Snyder's copyright and the uncopyrighted model cast iron mechanical bank which is itself a reproduction of the original public domain Uncle Sam bank. Appellant Snyder claims differences not only of size but also in a number of other very minute details: the carpetbag shape of the plastic bank is smooth, the iron bank rough; the metal bank bag is fatter at its base; the eagle on the front of the platform in the metal bank is holding arrows in his talons while in the plastic bank he clutches leaves, this change concededly having been made, however, because "the arrows did not reproduce well in plastic on a smaller size." The shape of Uncle Sam's face is supposedly different, as is the shape and texture of the hats, according to the Snyder affidavit. In the metal version the umbrella is hanging loose while in the plastic item it is included in the single mold. The texture of the clothing, the hairline, shape of the bow ties and of the shirt collar and left arm as well as the flag carrying the name on the base of the statute are all claimed to be different, along with the shape and texture of the eagles on the side. Many of these differences are not perceptible to the casual observer. Appellants make no claim for any difference based on the plastic mold lines in the Uncle Sam figure which are perceptible.
Our examination of the banks results in the same conclusion as that of Judge Metzner in Etna Products, the earlier case enjoining Snyder's copyright, that the Snyder bank is "extremely similar to the cast iron bank, save in size and material" with the only other differences, such as the shape of the satchel and the leaves in the eagle's talons being "by all appearances, minor." Similarities include, more importantly, the appearance and number of stripes on the trousers, buttons on the coat, and stars on the vest and hat, the attire and pose of Uncle Sam, the decor on his base and bag, the overall color scheme, the method of carpetbag opening, to name but a few. After seeing the banks and hearing conflicting testimony from opposing expert witnesses as to the substantiality or triviality of the variations and as to the skill necessary to make the plastic model, the court below 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. All you have proved here by the testimony today is that if you give a man a seven-inch model and you say I want this to come out in a five-inch model, and he copies it, the fact that he has to have some artistic ability to make a model by reducing the seven to the five adds something to it. That is the only issue in this case.
The Court: That is the only issue. I have given you my finding of fact.
As Judge Metzner went on to say in his opinion, the appellants' plastic version "reproduces" the cast iron bank "except that it proportionately reduces the height from approximately 11 inches to approximately nine inches with trivial variations." 394 F. Supp. at 1390. The court noted that appellants "went to great pains on the hearing to prove that there were substantial differences between the iron and the plastic articles," id. at 1391, and found that there had been no "level of input" such as in Alva Studios, Inc. v. Winninger, 177 F. Supp. 265, 267 (S.D.N.Y. 1959) ("great skill and originality" called for in producing an exact scale reduction of Rodin's famous "Hand of God," to museum specifications). The substance of appellee's expert's testimony on which the district judge evidently relied was that the variations found in appellants' plastic bank were merely "trivial" and that it was a reproduction of the metal bank made as simply as possible for the purposes of manufacture. In other words, there were no elements of difference that amounted to significant alteration or that had any purpose other than the functional one of making a more suitable (and probably less expensive) figure in the plastic medium.
What the leading authority has called "the one pervading element prerequisite to copyright protection regardless of the form of the work" is the requirement of originality -- that the work be the original product of the claimant. 1 M. Nimmer, The Law of Copyright § 10, at 32 (1975). This derives from the fact that, constitutionally, copyright protection may be claimed only by "authors." U.S. Const., art. I, § 8; Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58, 28 L. Ed. 349, 4 S. Ct. 279 (1884). Thus, "one who has slavishly or mechanically copied from others may not claim to be an author." 1 M. Nimmer, supra, § 6, at 10.2. Since the constitutional requirement must be read into the Copyright Act, 17 U.S.C. § 1 et seq., the requirement of originality is also a statutory one. Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2d Cir. 1945). It has been the law of this circuit for at least 30 years that ...