The opinion of the court was delivered by: CHARLES S. HAIGHT, JR.
This copyright case, in which plaintiff and defendant cross-move for summary judgment on the issue of infringement, requires the Court to consider the extent of copyright proctectibility where the same artist creates derivative works based the same object in the public domain.
At the center of this litigation stands the Troll. The Troll is "a supernatural creature of Scandinavian folklore variously portrayed as a friendly or mischievous dwarf, or sometimes giant, that lives in caves, in the hills, or under bridges." American Heritage Dictionary of the English Language, New College Edition (1976) at 1375. In or about 1959 a citizen of Denmark, Thomas Dam, created Troll dolls which he thereafter exported to the United States for sale. Because Dam's company sold or publicly distributed its Troll dolls in the United States without copyright notice, they passed into the public domain. That status was adjudicated in Scandia House Enterprises, Inc. v. Dam Things Establishment, 243 F. Supp. 450 (D.D.C. 1965).
Plaintiff Modern Publishing ("Modern") and defendant Landoll, Inc. both publish, among other items, coloring books for children. Modern retained a free-lance artist named Arthur Friedman to create and illustrate coloring books and activity pads featuring Trolls, and copyrighted the results. Landoll then retained the same artist to create and illustrate Troll coloring books. Not surprisingly, plaintiff sued defendant for copyright infringement, adding pendent state and common law claims. The case is before the Court on the parties' cross-motions under Rule 56, Fed. R. Civ. P., for partial summary judgment on the issue of infringement.
In January 1992 Modern engaged Friedman to create original cover art, based upon the public domain Troll, for a series of Troll coloring books that Modern intended to publish. After approving Friedman's cover art, Modern entered into a written agreement with him dated February 19, 1992. Modern agreed to engage Friedman to create and draw, in addition to the covers, the interior pages for four Troll coloring and activity books. Friedman executed that commission during the period February-April, 1992. He also created for Modern two flip-page activity pads illustrated by Trolls. Friedman assigned to Modern all of his rights, including all copyrights, in these works.
Modern secured registrations of copyright of derivative works for each of the six publications illustrated by Friedman. With respect to the four activity books, each certificate of registration identifies Friedman as one of two authors of the copyrighted work. The nature of Friedman's authorship is described as "cover and interior illustration." The other author is identified as Bud Simpson, whose nature of authorship is described as "writer." Each certificate recites that Modern is the copyright claimant by virtue of "written assignment." Each certificate, under item 6A, covering derivative works, identifies as the preexisting material "public domain troll dolls," and specifies as material added to that work "interior text and illustrations including original modification of materials in item 6A." The certificates of registration for the two activity pads list Friedman and Pattie Silver-Thompson as co-authors. The nature of Friedman's authorship is described as "cover illustration," and that of Silver-Thompson as "interior illustrations." Item 6A on the certificate identifies the preexisting material as "public domain troll dolls," and specifies, as material added to this work, "interior text and original illustrations including original modification of materials in item 6A." Unlike the certificates for the four activity books, the author of the added text is not identified; but in the view I take of the case, that is not a material omission.
It is common ground that in May 1992 Landoll retained Friedman to illustrate four Troll activity books which Landoll then marketed. Tonda Rae Nalle was the Landoll employee who negotiated with Friedman. In a letter dated June 2, 1992 Nalle advised Friedman of the subject matter of the desired covers (Trolls engaged in skate boarding, playing in a band, flying kites, and at the beach). Nalle also instructed Friedman in that letter: "Please key them similarly to the ones you did for Modern - neuter, no clothes."
When Modern became aware of Landoll's Troll activity books illustrated by Friedman, it sent Landoll a cease and desist letter. Landoll took the position that there had been no copyright infringement. This suit followed.
The Court has before it a full set of the parties' publications. The Second Circuit has held that where proof of unauthorized copying of protectible material rises to the level where no reasonable juror could find otherwise, a copyright holder is entitled to summary judgment on the issue of infringement. Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.), cert. denied, 121 L. Ed. 2d 278, 113 S. Ct. 365 (1992). Conversely, where the similarity demonstrated pertains solely to noncopyrightable material, summary judgment for the accused infringer is appropriate. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 915 (2d Cir. 1980).
Landoll relies upon the latter of these principles because, in its view, Friedman's Troll illustrations are not protectible by copyright as a matter of law. Landoll stresses that the Troll is in the public domain. It relies upon the well-established rule that "ideas, concepts, and the like found in the common domain are the inheritance of everyone," so that what copyright law protects "is the original or unique way that an author expresses those ideas, concepts, principles or processes." Rogers v. Koons at 308. From these general considerations, Landoll derives the specific conclusion that all Modern can protect against copying "are the particular poses and layouts in which the Trolls are depicted in plaintiff's copyrighted works." Main brief at 9. Because Landoll's activity books show the Trolls pursuing different activities and striking different poses from those depicted in Modern's publications, the argument concludes, there is no infringement.
This analysis is flawed in several respects. Landoll's construction of the copyright registrations Modern obtained is unreasonably narrow. The Copyright Act provides that a certificate of registration "shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). The certificate "establishes a presumption of originality in the work registered." Business Trends Analysts, Inc. v. The Freedonia Group, Inc., 700 F. Supp. 1213, 1231 (S.D.N.Y. 1988). The presumption of originality conferred by a certificate of registration is inherent in the statutory scheme, since only "original works of authorship" are entitled to copyright protection. 17 U.S.C. § 102(a). See ...