CITE:  103 F. Supp. 227
CMON:  February 1952
PLAIN: Stein et al.
DEFND: Rosenthal et al.
COURT: United States District Court, S. D. California
DATE:  February 21, 1952


Action by Benjamin Stein and Rena Stein, doing business as Reglor of
California, against William Rosenthal, doing business as California Art
Works, and another, for damages for copyright infringement and unfair
competition.  The defendants filed counterclaims, and a third party
complaint against Valentino Santi.  The District Court, Tolin, J., held
that defendants infringed plaintiffs' copyright but did not engage in
unfair competition.

Judgment in accordance with opinion.

  Utilitarian products, even if artistic, are patentable not copyrightable.

JUDGE: TOLIN, District Judge


An opinion is indicated because contentions have been made that the
copyrights involved in this case are invalid for the same reasons which
voided the same plaintiff's copyrights of similar subject matter in
Stein v. Expert Lamp Company, 7 Cir. 1951, 188 F.2d 611, Id., D.C.,
96 F.Supp. 97.  There are points of similarity and also points of
dissimilarity between the facts in this case and those in the cited

Plaintiffs are copyright proprietors concerning four copyrights for which
the Register of Copyrights has issued certificates of registration in
Class H, identified as Certificates 1721, 1723, 1737 and 1738.  The
certificates relate to statuettes or sculpture entitled Male and Female
Curved Ballet Dancers; Egyptian Dancer, Male; and Egyptian Dancer, Female.
Under the partnership style Reglor of California, plaintiffs have
reproduced and sold many copies in the form of statuettes, each one of
which has been marked with the required statutory notice.  A few copies
of some of the statues were sold simply as statuettes.  By far the
greater number were wired with electrical assemblies to which lamp shades
were attached and were sent to the retail market by plaintiffs as the
supporting bases of fully assembled table lamps.

The photographs of the statuettes deposited with the Copyright Office, as
part of the claimed copyright in a reproduction of a work of art, are
photographs of mere statues alone without electrical assemblies, lamp
shades, lamp mounting stubs or any other addition to the purely artistic
sculpture.  Insofar as the copyright registration shows, the several works
registered are statues only.  There is no suggestion in any of the several
claims to copyright of any claim except the form of the figures.  There
are no mechanical or utilitarian aspects to the statues.  None of the
claims to copyright suggest any utilitarian use and if adaptability to 
such a purpose were to be sought solely from examination of the copyrighted
material, the result would be negative.

It is contemporary interior decorating practice to place lamp assemblies in
or near vases, urns, figures, and other art objects.  Some of the exhibits
received in trial of the unfair competition aspects of this case consist of
carved figures anchored to a base which also supports a table lamp which is
complete in itself and no dependent in any way upon the accompanying statue.
Awareness of the current decorators' custom might suggest to the possessor
of any one of the figures as copyrighted that it could be advantageously
placed on or near the same base used to support a table lamp, or even that
it might be wired itself and thereby integrated into the lamp.  Any such
idea generated in the mind of one coming upon plaintiffs' registrations in
the Copyright Office would arise from awareness of the current fashion
rather than from examination of the copyrighted sculpture.  Viewed under
like circumstances some years ago the suggestion of adaptation to
usefulness, again coming from awareness of a prevailing fad, might have
been to insert a ring into the figure and use it as a hitching post.
To some observers these might seem inappropriate figures for such a use.
The same might be thought of a current use of the figures in lamp
assemblage. The point, insofar as this case is concerned, is simply that
the copyrighted material is in itself non-utilitarian and non-mechanical.
Protection is not dissipated by taking an unadulterated object of art 
as copyrighted and integrating it into commercially valuable merchandise.
The appropriateness of copyright registration is determined by the character
of the registered work of art as registered and not by the ability, intent
or hope of the registrant to use it as a dress for a utilitarian object. 
Copyright protection is not reserved exclusively to proprietors who do not
intend to earn money by commercialization of their art.

Plaintiffs and defendants are competing manufacturers of what they describe
as "action lamps". As understood in the lamp trade, this term describes
electric table lamps in which a statuette of some figure in action is either
employed as the supporting member of the lamp or as the base of the lamp or
as a decorative accompanying figure. After obtaining the copyrights in 
question, plaintiffs copied the statuettes of the action Jamps. Defendants
obtained some of plaintiffs' lamps in the open market and copied the whole
thereof including the copyrighted statuettes. Adaptation to practicality
of the copied art and both plaintiffs' and deiendants' use thereof was 
accomplished by molding a metallic electrical conduit into statuettes which
were exact replicas of the copyrighted material. Lamp mounting stubs were
added and the completed lamp, including light bulb and shade, placed into
commerce. In their action for infringement oi copyright, plaintiffs do not
seek to enjoin defendants from making action Jamps or even action lamps 
of similar design. They do seek to enjoin defendants from copying the
statuettes which they themselves have copied and which are the only subject
of copyright protection in this case. Pending determination of this action,
defendants have suspended manufacture of the questioned articles. It is
these facts that distinguish this litigation from plaintiffs' earlier suit 
against another defendant. The products involved in Stein v. Expert Lamp
Company, supra, were 188 F.2d 612. "Sculptured Figure of Male Balinese
Dancer" and "Sculptured Figure of Female Balinese Dancer". Unlike the
Egyptian dancers and ballet figures involved in the case now before the
Court, the Decision in the Expert case states that the copies submitted 
to the Copyright Office including projecting lamp stubs. After procuring
certificates of registration from the Register of Copyrights, plaintiffs
extensively manufactured table lamps embracing copies of the copyrighted
statues. Defendants procured a set at retail. They caused the removal of
the copyright notice and employed third party defendant, Valentino Santi,
to make casts of the copyrighted statuettes and placed a substantial order
with him for statuettes made from such casts. Defendants requested him to
insert a copyright notice in the place from which they had removed
plaintiffs' notice of copyright.  This he refused to do but finally
compromisedwith defendants by inserting the legend "Pat Co."

Plaintiffs' copies of their protected statues, as used in their lamp
business, differed from the copyrighted originals in that they were cast
with electrical conduits and mounting stubs added to the sculpture. So 
were the copies cast for the defendants by Valentino Santi, the third party
defendant.  In this respect they materially differed from original statues
submitted for theregistration which had been perfected under Section 5(g)
of Title 17, United States Code Annotated. It is this difference which
distinguishes this case from Stein v. Expert Lamp Company, 7 Cir., 1951,
188 F.2d 611, Id., D.C., 96 F.Supp. 97. (Both Opinions should be read to
get all of the facts.) But for the addition of mounting stubs which adapted
them to the lamp manufacturer's use, the infringing copies were identical
with the non-utilitarian originals depicted on the registration certificates.

It is admitted that defendants have copied plaintiffs' copyrighted statues.
This was wilfully done after deliberate removal of the copyright notice.
The defense is that the statues were initially ineligible for copyright
protection because of adaptability of copies to integration with other
objects into a table lamp. Defendants contend that if not initially
ineligible to copyright protection, the protection has evaporated with
the use to which the statuettes have been placed. Defendants insist that 
copyright protection is very narrow and if a manufacturer conceives an
object of utility into which or onto which copyrighted material can be
copied, the combining of a copy of a copyrighted work of art with an
object of utility destroys the protection of the copyright.  Defendants
contend that it is inherent in this claimed rule that proprietors of
copyrights of works of art must avoid copying any such work into or onto
a mechanical or utilitarian object or forfeit their right to have others
restrained from doing so.

Sculpture of the type protected by plaintiffs' copyrights has been
recognized in numerous cases. See: King Features Syndicate v. Fleischer,
2 Cir., 299 F. 533; Fleischer Studios, Inc., v. Ralph A. Freundlich, Inc.,
2 Cir., 73 F.2d 276; Jones Bros. Co. v. Underkoffler, D.C., 16 F.Supp. 729;
F. W. Woolworth Co. v. Contemporary Arts, Inc., 1 Cir., 193 F.2d 162,
92 U.S.P.Q. 4, and cases therein cited.

We have been referred to the familiar rule that protection of productions
of the industrial arts, utilitarian in purpose and character, even if
artistically made or ornamented, depends upon action under the Patent Law
rather than the Copyright Act which gives protection to, Section 5(g), 17
U.S.C.A., "Works of art; models or designs for works of art". This poses the
question whether the registered sculpture is an article utilitarian in
purpose and character. The Court holds that as registered, it is not. Each
of the statuettes is mere art. It need not be fine art. The word "fine" was
stricken from the Act of March 4, 1909.	Jones Bros. Co. v. Underkoffler,
D.C., 16 F.Supp. 729. To be eligible it must be not utilitarian in itself.
Having qualified for registration by reason of its purely artistic
character, the question presented is whether an intent on the part of the
claimant to copy such protected sculpture in such a way as to artistically
enhance some separate and utilitarian article of manufacture destroys the
right to copyright. The argument that this is so is but another vehicle
to carry defendants' philosophy that if the artist intends to profit by 
his creation he cannot acquire protection.  To uphold this argument would
be to require the Judicial inquiry to plumb the mind of every copyright
proprietor and determine his plans and intentions as of the time of
registration. This impossibility is not contemplated by the Statute.

It is recognized that copyright protection existing for original art does
not extend to protecting a table lamp which employs a copy of the
protected art as part of its ornamentation.  The copyright proprietor's
right is limited to the right to make or use copies of the protected
material.  Bleistein v. Donaldson Lithographing Co., 188 U.S. 239,
23 S.Ct. 298, 47 L. Ed. 460.  This protection is absolute and the
copyrighted art under protection of valid copyrights cannot be copied
for any purpose without consent of the proprietor.  Thus when copied and
used, as defendants have used it, in decoration of a utilitarian object,
there is an infringement for which damages will be allowed for past
infringing acts and injunctive relief issued against future like wrong.

Plaintiffs' Second Cause of Action is based upon alleged unfair competition.
They have not proved a case under that cause of action. There was no
palming off of defendants' wares for those of plaintiffs. Plaintiffs
perfected the development of extensive good-will for their firm style Reglor
of California. Defendants had their own trade style and vended their 
lamps under that name. There was no usurpation of plaintiffs' trade name
although customers of plaintiffs were solicited by defendants to purchase
the infringing products of defendants on a basis of price competition.
In other respects defendants unconscionably invaded plaintiffs' copyright
and in their solicitation of custom for their infringing merchandise,
harassed plaintiffs' customers and resorted to such devices as
impersonation of Federal Agents in an attempt to gain a view of the 
tradesmen's records of business with plaintiffs. Where the techniques of
copying and vending infringing articles are so tinged with bad faith,
plaintiffs are entitled to reasonable attorneys' fees upon their cause
of action for copyright infringement.  The authority for awarding attorney
fees is declared in Title 17 U.S.C.A. 40: "In all actions, suits, or
proceedings under this title, except when brought by or against the United
States or any officer thereof, full costs shall be allowed, and the court 
may award to the prevailing party a reasonable attorney's fee as part of
the costs."

Although the Statute declares that the awarding of attorney fees is a matter
of discretion, the Court of Appeals for the Ninth Circuit, in considering
an award of attorney fees in a patent case where a like statute applied,
Title 35 U.S.C.A. 70, has declared the principles which shall guide the
District Court in the exercise of discretion. See: Park-In-Theatres, Inc.
v. Perkins, 9 Cir., 190 F.2d 137, at page 142:  "* * * The exercise of
discretion in favor of such an allowance should be bottomed upon a finding
of unfairness or bad faith in the conduct of the losing party, or some other
equitable consideration of similar force, which makes it grossly unjust 
that the winner of the particular law suit be left to bear the burden of
his own counsel fees which prevailing litigants normally bear. * * *"

The Court finds that the infringement was made in bad faith and that the
conduct of the defendants in their infringing actions was unfair .

There is an unfair competition count which the Court decides in favor of
defendants on the principles declared in Chas. D. Briddell, Inc., v.
Alglobe Trading Corp., 2 Cir., 194 F.2d 416.

There is also an alleged cause of action based upon a claim for statutory 
penalty described by Title 35 U.S.C.A. 50. The Court finds that this Third
Cause of Action has not been sustained by the evidence.

Some portion of the trial, which extended over twelve days, and some 
considerable portion of the extensive briefs filed were devoted to the
litigation of causes of action in which plaintiffs have not prevailed.
There is an undisputed showing to the Court that plaintiffs' attorneys
have billed them $8,692 for representation herein. Attorneys' fees cannot
be allowed for any representation except that reasonably necessary to
redress the infringement of plaintiffs' copyright and procure injunctive
aid against further infringement. The amount billed plaintiffs by their
attorneys is not binding upon a third party liable to pay such attorneys' 
fees as may be assessed by the Court. The Court awards plaintiffs $3,500
attorneys' fees to be recovered from defendants.

Plaintiffs in their brief pray the Court to award the cost of daily copy of 
transcript as an item of cost. Local Rule 15 provides that a party in whose
favor a judgment or decree for costs is awarded or allowed by law shall
file with the clerk his bill of costs, and further provides that the clerk
shall tax the same upon application. The current application of plaintiffs 
for allowance of the particular item of cost now sought is therefore
prematurely made.  During the trial a transcript of the previous day's
testimony was furnished each morning to the Court and counsel. The 
Court did not order this to be done nor did any party move the Court for
such an order. It was done at the instance of counsel for plaintiffs.
Although copies of transcript are taxable as costs, the extra costs 
incurred by having daily copy is not chargeable as an item of cost unless
ordered by the Court or unless extraordinary circumstances warrant the Court
in imposing the excess expense for the speedy delivery of daily copy to the
litigants. There was no circumstance of urgency in this case. The record
does not show the existence of circumstances which would warrant taxing
the additional cost of daily copy, although the basic cost of transcript 
should be allowed. See: Hayes v. Surface Combustion Corporation, D.C.,
25 F. Supp. 515.

Judgment will be for the plaintiffs upon the First Cause of Action.
Damages are awarded in the sum of $570 computed at $10 for each of the 57
infringing articles actually manufactured.  Injunction as prayed.
Attorney's fees $3,500.  Judgment for defendants upon Second and Third
Causes of Action.  Judgment for third party defendant, Valentino Santi,
for his costs upon the issues joined by third party complaint against
him and his answer thereto.  There are no equitable or special circumstances
existing which would warrant the allowance of attorneys' fees in favor
of third party defendant.  Defendants have not sustained their
counterclaims and judgment thereon will be in favor of plaintiffs.

Findings and judgement are to be settled pursuant to rule.