HAMLEY, Circuit Judge:
Roth Greeting Cards (Roth) and United Card Company (United), both corporations, are engaged in the greeting card business. Roth brought this suit against United to recover damages and obtain injunctive relief for copyright infringement of seven studio greeting cards.
Roth's claim involves the production and distribution by United of seven greeting cards which bear a remarkable resemblance to seven of Roth's cards on which copyrights had been granted. Roth employed a writer to develop the textual material for its cards. When Roth's president determined that a textual
During the period just prior to the alleged infringements, United did not have any writers on its payroll. Most of its greeting cards came into fruition primarily through the activities of United's president, Mr. Koenig, and its vice-president, Edward Letwenko.
The source of the art and text of the cards of United, here in question, is unclear. Letwenko was unable to recall the origin of the ideas for most of United's cards. He speculated that the gags used may have come from plant personnel, persons in bars, friends at a party, Koenig, or someone else. He contended that the art work was his own. But he also stated that he visited greeting card stores and gift shows in order to observe what was going on in the greeting card business. Letwenko admitted that he may have seen the Roth cards during these visits or that the Roth cards may have been in his office prior to the time that he did his art work on the United cards.
On these facts, the trial court held for defendant on alternative grounds, lack of jurisdiction and lack of infringement of any copyrightable material.
The trial court based its jurisdictional holding on 17 U.S.C. § 13. This statute provides that no action for infringement of copyright "shall be maintained" until the provisions of Title 17 of the United States Code with respect to the deposit of copies and registration of such work "shall have been complied with."
The provisions of that title with respect to the deposit of copies and registration, insofar as here relevant, are 17 U.S.C. §§ 10, 13 and 209. Under these provisions one who desires to copyright his work by publication: (1) publishes the work with an attached notice of copyright, (2) promptly deposits, in the copyright office or in the mail addressed to the Register of Copyrights, two completed copies of the work and (3) pays the prescribed fee. If these steps have been properly performed it is the duty of the Register of Copyrights to issue a certificate of registration under the seal of the copyright office.
Roth followed the described three-step procedure in seeking copyright protection for its greeting cards on June 6, 1966. The copyright office returned the applications for a change of category of registration. The revised applications were placed in the mail to the copyright office on July 27, 1966, and received there on July 29, 1966. Roth filed this action on July 27, 1966, which was the same day it mailed the revised applications, but two days before they were received by the copyright office.
In holding that Roth failed to comply with 17 U.S.C. § 13, the district court in effect held that an action is "maintained" within the meaning of that statute when it is instituted. The court apparently reasoned therefrom that: (1) under section 13, a district court does not acquire subject-matter jurisdiction of a copyright infringement suit upon the filing of the complaint, if relevant revised copyright applications, required by the copyright office, are not then on file with that office; and (2) jurisdiction is not subsequently conferred upon receipt of the revised applications by the copyright office prior to judgment, at least in the absence of an amended complaint filed after such event.
The cases appear to be divided on the question of whether "maintained" as used in 17 U.S.C. § 13 means "begun" or "continued." But we need not resolve that question, for there are three other reasons why, in our opinion, the district court had subject-matter jurisdiction. First, when plaintiff placed the revised applications in the mail on July 27, 1966, it had done everything required of it
Accordingly we conclude that the district court judgment is not sustainable on jurisdictional grounds.
Turning to the merits, the trial court found that the art work in plaintiff's greeting cards was copyrightable, but not infringed by defendant. The trial court also found that, although copied by defendant, the wording or textual matter of each of the plaintiff's cards in question consist of common and ordinary English words and phrases which are not original with Roth and were in the public domain prior to first use by plaintiff.
Arguing that the trial court erred in ruling against it on merits, Roth agrees that the textual material involved in their greeting cards may have been in the public domain, but argues that this alone did not end the inquiry into the copyrightability of the entire card. Roth argues that "[I]t is the arrangement of the words, their combination and plan, together with the appropriate art work. * * *" which is original, the creation of Roth, and entitled to copyright protection.
In order to be copyrightable, the work must be the original work of the copyright claimant or of his predecessor in interest. M. NIMMER, COPYRIGHT (hereafter NIMMER), § 10 at 32 (1970). But the originality necessary to support a copyright merely calls for independent creation, not novelty. Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir. 1951). Cf. Baker v. Selden, 101 U.S. 99, 102-103, 25 L.Ed. 841 (1879).
United argues, and we agree, that there was substantial evidence to support the district court's finding that the textual matter of each card, considered apart from its arrangement on the cards and its association with artistic representations, was not original to Roth and therefore not copyrightable.
Considering all of these elements together, the Roth cards are, in our opinion, both original and copyrightable. In reaching this conclusion we recognize that copyright protection is not available for ideas, but only for the tangible expression of ideas. Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 98
This brings us to the question of infringement. Greeting cards are protected under 17 U.S.C. § 5(a) or (k) as a book, Jackson v. Quickslip Co., Inc., 110 F.2d 731 (2d Cir. 1940), or as a print, 37 C.F.R. § 202.14. They are the embodiment of humor, praise, regret or some other message in a pictorial and literary arrangement. As proper subjects of copyright, they are susceptible to infringement in violation of the Act. Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940).
To constitute an infringement under the Act there must be substantial similarity between the infringing work and the work copyrighted; and that similarity must have been caused by the defendant's having copied the copyright holder's creation. The protection is thus against copying — not against any possible infringement caused when an independently created work coincidentally duplicates copyrighted material. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936).
It appears to us that in total concept and feel the cards of United are the same as the copyrighted cards of Roth. With the possible exception of one United card (exhibit 6), the characters depicted in the art work, the mood they portrayed, the combination of art work conveying a particular mood with a particular message, and the arrangement of the words on the greeting card are substantially the same as in Roth's cards. In several instances the lettering is also very similar.
It is true, as the trial court found, that each of United's cards employed art work somewhat different from that used in the corresponding Roth cards. However, "[T]he test of infringement is whether the work is recognizable by an ordinary observer as having been taken from the copyrighted source." White-Smith Music Pub. Co. v. Apollo Company, 209 U.S. 1, 17, 28 S.Ct. 319, 323, 52 L.Ed. 655 (1907), Bradbury v. Columbia Broadcasting System, Inc., 287 F.2d 478, 485 (9th Cir. 1961).
The remarkable similarity between the Roth and United cards in issue (with the possible exception of exhibits 5 and 6) is apparent to even a casual observer. For example, one Roth card (exhibit 9) has, on its front, a colored drawing of a cute moppet suppressing a smile and, on the inside, the words "i wuv you." With the exception of minor variations in color and style, defendant's card (exhibit 10) is identical. Likewise, Roth's card entitled "I miss you already," depicts a forlorn boy sitting on a curb weeping, with an inside message reading "* * * and You Haven't even Left * * *" (exhibit 7), is closely paralleled by United's card with the same caption, showing a forlorn and weeping man, and with the identical inside message (exhibit 8).
The question remains whether United did in fact copy the Roth cards. Since direct evidence of copying is rarely available, copying may be established by proof of access and substantial similarity. NIMMER § 141.2 at 613. Although in some circumstances the mere proof of access and substantial similarity will not demand that the trier automatically find copying, the absence of any countervailing evidence of creation independent of the copyrighted source may well render clearly erroneous a finding that there was not copying.
In the present case there was clear and uncontradicted testimony establishing United's access to the Roth cards. United brought Roth cards to its offices. It sent its employees out to gift shows and retail stores where the Roth cards were on display to observe "what the competition was doing." In addition, there was testimony almost compelling the inference that it was United's practice to look at the cards produced by
The judgment is therefore reversed and the cause is remanded for further proceedings consistent with this opinion.
KILKENNY, Circuit Judge (dissenting).
The majority agrees with a specific finding of the lower court that the words on the cards are not the subject of copyright. By strong implication, it likewise accepts the finding of the trial court that the art work on the cards, although subject to copyright, was not infringed. Thus far, I agree.
I cannot, however, follow the logic of the majority in holding that the uncopyrightable words and the imitated, but not copied art work, constitutes such total composition as to be subject to protection under the copyright laws. The majority concludes that in the overall arrangement of the text, the art work and the association of the art work to the text, the cards were copyrightable and the copyright infringed. This conclusion, as I view it, results in the whole becoming substantially greater than the sum total of its parts. With this conclusion, of course, I cannot agree.
The majority relies principally on Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940). This case, as I read it, does not even intimate that the whole can exceed the sum total of its parts. It involved an intimation of the "Superman" image by a rival company. In finding infringement, the "Superman" court emphasized that "So far as the pictorial representations and verbal descriptions of `Superman' are not a mere delineation of a benevolent Hercules, but embody an arrangement of incidents and literary expressions original with the author, they are proper subjects of copyright and susceptible of infringement because of the monopoly afforded by the Act." p. 433 (Emphasis added.) Moreover, the "Superman" case involved the creation of a character, a written dialogue and description which were clearly protected by copyright law in much the same way that a dialogue and description found in a novel is protected. The district court
Aside from the above, I call attention to the fact that a number of experts appeared in the lower court and testified that the phrases on the cards were in common use and that Roth's writer often obtained his ideas from others. In these circumstances, we should not set aside the findings of the lower court. Williams v. Kaag Manufacturers, Inc., 338 F.2d 949 (9th Cir. 1964). Beyond that, ordinary phraseology within the public domain is not copyrightable. Dorsey v. Old Surety Life Insurance Co., 98 F.2d 872 (10th Cir. 1938); American Code Co. v. Bensinger, 282 F. 829 (2d Cir. 1922).
Feeling, as I do, that the copyright act is a grant of limited monopoly to the authors of creative literature and art, I