ANOTHER THOUGHT #2
COPYRIGHTABLE CONAN?
Paul Herman
September 2001
Given the recent filing of a lawsuit involving the copyright
and trademark rights in Zorro, I thought I’d take us back to another case
that is nearer and dearer to our hearts, Conan Properties, Inc. (CPI) v.
Mattel, Inc.
CPI filed suit in the United States District Court
for the Southern District of New York, which is New York City, in 1984, against
Mattel, alleging a whole slew of causes of action, including copyright
infringement, trademark infringement, unfair competition, dilution, breach of
contract, and fraud. Mattel then counterclaimed against Conan Properties, Inc.
for fraud. This is the first, last, and only published case where CPI sued
anyone over the copyright in Conan.
And even here, they define that copyright quite narrowly.
The first published statement from the court
addresses some of the factual background, and an attempt by Mattel to get several
of the causes of action thrown out for failure to state a claim. See 601 F.Supp. 1179 (SDNY, 12/11/84)
(That’s volume 601 of the Federal Supplement, page 1179. The Federal Supplement is where US
District Court cases are published.
You can find this item in any legal library, some public libraries, and
online possibly.)
As the court states the facts well, I’ll let it
do so. If you’ve never read a court opinion, a short lesson. Courts generally write in the IRAC
fashion, i.e., Issue, Rule, Analysis, Conclusion. The issue is raised by the parties, the court will state the
relevant law. The relevant law is
determined by (1) the actual statutes and rules that apply, and (2)
interpretation of those statutes and rules by courts of precedential authority,
i.e., courts that have authority over this particular court and have addressed
particular nuances before. Such
courts would be the US Supreme Court, the US Court of Appeals for the Second
Circuit, and the district court’s own previous interpretations. The court must tell you where it gets
every fact and every interpretation of the law. The court then makes its
analysis, and states its conclusion.
For those of you from civil law counties (Hi Patrice!), this will all
seem weird, but it’s the way we work.
US District Judge Kevin Thomas Duffy writes:
Plaintiff, Conan Properties, Inc. ("CPI"), brings this action
against defendant, Mattel, Inc. ("Mattel"), alleging copyright
infringement, Lanham Act violations, unfair competition, dilution, breach of contract,
and fraud and misrepresentation. Mattel moves pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure to dismiss plaintiff's amended complaint on
several grounds, including (1) failure to plead compliance with statutory
prerequisites of the 1976 Copyright Act; (2) failure to plead fully a cause of
action under the Lanham Act; and (3) absence of jurisdiction over the state law
claims.
The facts pertinent to the instant motion, as set forth in plaintiff's amended
complaint, are as follows:
Robert E. Howard created the fictitious character CONAN THE BARBARIAN
("CONAN") sometime in the 1930's. The CONAN character is a fantasy
figure with the ultimate body builder's body who lives in an imaginary place
and time. CONAN was licensed to Lancer Books and Marvel Comics in the 1960's
and 1970's. In 1977, CPI was formed and became "the owner of all rights in
CONAN, including all trademarks, copyrights, registered copyrights, characters
and stories." n1 Amended Complaint, para. 6. Since the formation of CPI,
CONAN has become increasingly popular and been the subject of comics, books,
and movies.
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n1 It should be noted that CPI does not explain how it came to acquire these
rights. Nowhere in its Amended Complaint does CPI refer to a transfer from
either Howard or Lancer Books and Marvel Comics. There is, however, a vague
reference to CPI's "predecessors," but no indication as to who they
might be. More significantly, there is no statement to the effect that a
transfer of this type has been recorded in the Copyright Office.
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In 1980, CPI, through its agent, Conan Licensing Company ("CLC"), began
negotiations with Mattel regarding the possible licensing to Mattel of certain
toy rights in CONAN. During this time, Mattel received a substantial quantity
of material on the CONAN character. On July 31, 1981, CPI and Mattel executed a
License Agreement whereby Mattel was granted "the right to make and sell
certain plastic action figures of CONAN and ancillary characters as depicted in
the CONAN movie." Amended Complaint, para. 12. The Agreement provided,
however, "that nothing in the License should be construed as an assignment
or grant to Mattel of any right, title or interest in or to CONAN, and that all
rights relating thereto were reserved by CPI (except only for the licensee to
use the property as specifically agreed to)." Amended Complaint, para. 14.
It was also agreed that, after the termination of the License Agreement, Mattel
would not make or sell any CONAN toys.
In January 1982, Mattel requested that the License Agreement be terminated. On
April 14, 1982, CPI and Mattel entered into a termination agreement which
provided that "all materials created and or developed by Mattel for use in
connection with products under the CONAN License" would be delivered to
CPI's agent, CPC, which would have "the exclusive right to use such material."
Amended Complaint, para. 17.
In February 1982, Mattel introduced a fantasy character, "He-Man," as
part of its new "Masters of the Universe" toy line of action figures.
Since that time, Mattel has also featured He-Man and the other Masters of the
Universe characters in, inter alia,
a television series, comic books, and video tapes. Thereafter, CPI commenced
this action asserting that these figures are copies of CONAN, were created
under the License, and are CPI's property. Amended Complaint, paras. 20, 21.
DISCUSSION
I.
In its first cause of action, CPI claims that Mattel has infringed plaintiff's
copyrights in violation of 17 U.S.C. § 101
et seq.. Defendant, however,
contends that CPI is claiming ownership of copyrights by reason of a transfer
and that proof of recordation of such a transfer is a jurisdictional
prerequisite to a copyright infringement action. Defendant argues that because
CPI has failed to provide proof of recordation of the transfer, the court does
not have subject matter jurisdiction over plaintiff's copyright claim and must
therefore dismiss it.
The statute defendants rely on in making the above argument is 17 U.S.C. § 205(d) which provides:
Recordation as Prerequisite to Infringement Suit. -- No person claiming by
virtue of a transfer to be the owner of copyright or of any exclusive right
under a copyright is entitled to institute an infringement action under this
title until the instrument of transfer under which such person claims has been
recorded in the Copyright Office, but suit may be instituted after such
recordation on a cause of action.
The language of section 205(d) makes clear that if CPI were claiming to be the
owner of the copyrights by virtue of a transfer, it would have to have recorded
the transfer prior to instituting this action. CPI states, however, that it is
not claiming by virtue of a transfer, but rather, on the basis of its own
authorship and in fact, nowhere in plaintiff's Amended Complaint does it state
that it is claiming by virtue of a transfer. Consequently, section 205(d) is
inapplicable to plaintiff's copyright claim and defendant's argument that this
court does not have subject matter jurisdiction over that claim is without
merit. The issue arises, however, whether plaintiff's copyrights are derivative
works and thus only warranting limited protection. Defendant contends that
because the CONAN character was originated by Robert Howard in the 1930's,
CPI's copyrights are derivative works. I agree.
The statutory definition of "derivative work" is unambiguous. "A
'derivative work' is a work based upon one or more preexisting works. . .
." 17 U.S.C. § 101. As CPI's
copyrights are works which are based upon the preexisting work of Robert
Howard, they are unquestionably derivative. Indeed, in its papers, CPI does not
challenge the classification of its copyrights as "derivative works."
CPI asserts, however, that even if the copyrights are derivative, it is the
author of the copyrights and, as the author, it has, at least, "exclusive
rights to the material contributions it made" to the works. Plaintiff's
Memorandum In Opposition To Defendant's Motion To Dismiss Amended Complaint, 3.
The relevant statutory section, provides in part:
The copyright in a . . . derivative work extends only to the material contributed
by the author of such work, as distinguished from the preexisting material
employed in the work, and does not
imply any exclusive right in the preexisting material.
17 U.S.C. § 103(b). Thus, CPI's
copyrights in their derivative works may not be protected beyond the extent of
CPI's own material contributions. Any preexisting material CPI used in the
works is unprotected. The issue of what portion of the copyrighted works is
CPI's own contribution and what portion is preexisting material is, however, a
question of fact to be resolved at trial.
II.
In order to proceed in its copyright infringement action, plaintiff is required
to comply with the statutory requirement that all copyrights be registered. See 17 U.S.C. § 411(a)
(no action shall be instituted until registration of the copyright claim has
been made in accordance with this title). Without registration of the
copyrights the suit is barred and absent an allegation that the copyrights have
been registered the complaint is defective. See Charron
v. Meaux, et al.,
60 F.R.D. 619, 624 (S.D.N.Y. 1973).
Defendant asserts that, although CPI has attached copies of eight copyright
registrations to its Amended Complaint, these are all copyrights for comic
books. CPI has not alleged that it owns registered [**8] copyrights for books
or films or comic books (in addition to the eight registrations attached to the
Amended Complaint). Thus, defendant argues, CPI's claims of infringement of
copyrights, other than the claims relating to the attached registrations,
should be dismissed.
Although recitation of the fact that copyrights have been registered appears to
be a mere technicality, it is a prerequisite to this court's jurisdiction.
Accordingly, the motion to dismiss plaintiff's copyright infringement claims
with respect to books, films, and comic books, other than those which are the
subject of the registrations attached to the Amended Complaint, is granted
without prejudice to plaintiff's filing a second amended complaint within
twenty days of the filing of this order. If, in fact, the copyrights have been
registered, the defect in the Amended Complaint can be cured simply by filing a
second amended complaint, which relates back to the commencement of the action,
and which includes a recitation that the registration requirement has been
satisfied. See Roth Greeting Cards v. United Card
Co., 429 F.2d
1106, 1109 (9th Cir. 1970); Charron v. Meaux, et al., 60 F.R.D. at 624. This second amended complaint should
include, at the least, the registration numbers of all copyrights allegedly
infringed.
. . . .
So, early on the Court notices that CPI makes no
claim to the original Conan stories.
The court offers CPI the chance to amend its pleadings to include the
appropriate proof of ownership in any other copyrights it would like to bring
up, in addition to the eight comic books it listed copyright ownership in. But going forward, CPI would fail to
list any other copyrights of any kind, to any medium. It is an interesting question as to why. Perhaps they could not prove up
ownership of some items, perhaps they could on some but figured they had filed
enough to take the case forward.
For indeed they had.
As is typical in a large lawsuit, especially one with
some unique questions, lots of amendments were made to the complaint (filed by
CPI) and the answer (filed by Mattel), adding and deleting various parties and
causes of action.
Indeed, the next ruling from the court to be
published was relating to adding and deleting parties and causes of action,
published at 619 F.Supp. 1167 (SDNY, 9/26/85). Added to CPI’s side were MERCHANDISE DEVELOPMENT CORP.
(MDC), CONAN MERCHANDISING CORP. (CMC), UNIVERSITY PATENTS, INC. (UPI), CONAN
LICENSING CO. (CLC), and SUMMIT LICENSING CO. (SMC). Also added was a RICO count against CPI, which is generally
used for racketeering, and was allowed to stay in the case by the court. Even in this early opinion, the judge
noted the basic fact that “Plaintiff, Conan Properties, Inc.
("CPI"), brings this action against defendant, Mattel, Inc.
("Mattel"), alleging, inter alia, copyright infringement of its fictitious character
CONAN THE BARBARIAN ("CONAN").” 619 F.Supp. at 1167-8.
Following this detail work, the first substantive
ruling involved summary judgment motions by each side. Summary judgment means that the facts
and law are so clear, that only one outcome is reasonable, and the judge can
dispense with the matter right away, without any trial or jury. In considering a summary judgment
motion, a court will consider all factual allegations in favor of the
non-moving party, unless they are proven very strongly the other way. So basically, SJ only works if
it’s a laydown.
The court’s opinion is published at 712 F.Supp.
353 (SDNY, 4/19/89). Note that the
case has been ongoing for five years at this point. Why so long?
Facts had to be gathered, including discovery of the other side’s
key documents, and depositions taken of key people involved. Some lawyers will fight such things,
filing motion after motion to avoid disclosing anything. There must have been some impressive
fighting to take five years though.
After addressing the standards for summary judgment,
the court takes up the count of copyright infringement. 712 F.Supp. at 357. I will quote directly from the court,
as it is speaks for itself.
Starting in page 357:
II. Copyright Infringement
This story really begins in the early 1930s, when a visionary named Robert E.
Howard transcribed the exploits of Conan of Cimmeria. Warrior scion of a
"barbarian blacksmith," Conan lives in the "Hyborian Age,
between the sinking of Atlantis and the beginnings of recorded history."
Deposition of L. Sprague de Camp at 17 (Dec. 3, 1985). In the words of a
contemporaneous work, "The Nemedian Chronicles":
Know, O prince, that between the years when the oceans drank Atlantis and the gleaming cities, and the years of the rise of the sons of Aryas, there was an Age undreamed of, when shining kingdoms lay spread across the world like blue mantles beneath the stars . . . . Hither came Conan, the Cimmerian, black-haired, sullen-eyed, sword in hand, a thief, a reaver, a slayer, with gigantic melancholies and gigantic mirth, to tread the jeweled thrones of the Earth under his sandaled feet.
"The Nemedian Chronicles," reprinted in P.S. Miller & J. Clark, A Probable Outline of
Conan's Career (1938). n5
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n5 For more information on Conan and his creator, see generally G. Lord, The
Last Celt: A Bio-bibliography of R.E. Howard (1978).
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In "Red Nails," which first appeared in Weird Tales magazine in 1936, Howard described Conan's imposing
physique:
He was almost a giant
in stature, muscles rippling smoothly under his skin, which the sun had burned
brown.
. . . .
His great shoulders were as broad as those of Olmec and more cleanly outlined,
and his huge breast arched with a more impressive sweep into a hard waist . . .
. He might have been an image of primal strength cut out of bronze . . . .
Conan was a figure out of the dawn of time. . . .
R. Howard, "Red Nails," reprinted in Conan the Warrior 15, 95 (L.S. de Camp ed. 1967). Conan's job is quite
interesting, at least by today's standards: a "mercenary swordsman, . . .
hetman of the kozaki who dwell along the Zaporoska River," Conan travels
all over the world seeking (and finding) treasure, and grappling with monsters,
magicians, and scantily-clothed women. Nor would gray flannel be appropriate
for someone in Conan's profession. Conan wears a "pantherskin
loin-clout" and a "hauberk [of] leather and mail mesh." A "broad
leather belt" encircles Conan's hard waist, and Conan never leaves home
without his "broadsword and poniard." R. Howard, "The Hour of
the Dragon," reprinted in Conan the Conqueror 24, 121 (L.S. de Camp ed. 1967); "Red
Nails," supra, at 15.
Robert Howard ultimately wrote twenty plus Conan stories before he committed
suicide in 1936. n6 All were originally published in Weird Tales, and all came under the blanket copyrights secured
for each issue of the magazine in the name of the Popular Fiction Publishing
Co. When the copyrights lapsed after twenty-eight years, however, only seven of
the seventeen were renewed. Declaration of E. Fulton Brylawski (Sept. 11,
1987). As a result, the Conan of Robert Howard resides in the public domain.
[Emphasis added.]
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n6 The completed stories are "Beyond the Black River," "Black
Colossus," "The Devil in Iron," "Jewels of Gwahlur,"
"The People of the Black Circle," "The Phoenix on the
Sword," "The Pool of the Black One," "Queen of the Black
Coast," "Rogues in the House," "Red Nails," "The
Scarlet Citadel," "Shadows in Zamboula," "Shadows in the
Moonlight," "The Slithering Shadow," "The Tower of the
Elephant," "The Hour of the Dragon," "The God in the
Bowl," "The Frost Giant's Daughter," "The Vale of Lost
Women," and "A Witch Shall Be Born." Before he died Howard wrote
parts of other stories, most of which were finished by L. Sprague de Camp.
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CPI, the ultimate beneficiary of Howard's genius, owns copyrights in eight
Conan comic books published by Marvel Comics in the late 1970s. n7 In the first
count of its complaint, CPI alleges that Mattel's He-Man doll infringes its
rights in Conan. Third amended complaint paras. 22-27. A plaintiff alleging
copyright infringement must prove that she owns a valid copyright and that the
defendant copied the protected work without authorization. E.g., Eckes v. Card Prices Update, 736 F.2d 859, 861 (2d Cir. 1984) (citing Novelty Textile
Mills, Inc. v. Joan Fabrics Corp., 558
F.2d 1090, 1092 (2d Cir. 1977)); Manufacturers
Technologies, Inc. v. Cams, Inc., 706 F.
Supp 984; 1989 U.S. Dist. LEXIS 1551 (D.
Conn. 1989). Yet the law does not proscribe the copying of material
that cannot be copyrighted. The Court thus begins by assessing the validity of
CPI's registrations. n8
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n7 The registered comic books are: The Savage Sword of Conan the Barbarian no. 38, "Valley of the Vampires"
(Registration No. TX 212-755); no. 39, "Legions of the Dead"
(Registration No. TX 212-753); no. 40, "A Dream of Blood"
(Registration No. TX 268-713); no. 41, "Slave of the Amazon Queen"
(Registration No. TX 268-712); and no. 42, "The Devil Trees of
Gamburu" (Registration No. TX 268-711); and Conan the Barbarian no. 99, "Man-crabs of the Dark Cliffs"
(Registration No. TX 245-177); no. 100, "Death on the Black Coast"
(Registration No. TX 245-251); and no. 101, "The Devil Has Many Legs"
(Registration No. TX 245-232). In Conan Properties,
Inc. v. Mattel Inc., 601 F. Supp. 1179
(S.D.N.Y. 1984), Judge Duffy gave CPI leave to plead any copyrights
in any Conan books, comics, or movies other than the eight works listed above.
CPI declined to do so, and its infringement action is accordingly limited.
n8 The Copyright Act provides that "the certificate of a registration. . .
shall constitute prima facie evidence of the validity of the copyright . . .
." 17 U.S.C. § 410(c). CPI
does hold eight certificates. A "certificate of registration creates no
irrebuttable presumption of copyright validity [however, and when] other
evidence casts doubt on the question, validity will not be assumed." Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980). The
burden of proving invalidity rests on Mattel. Gaste
v. Kaiserman, 863 F.2d 1061, 1064 (2d
Cir. 1988).
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One of the first rudiments of intellectual property is that no one may
copyright an idea. The benefits of the Copyright Act of 1976, Pub. L. No.
94-553, 90 Stat. 2541 (codified as amended at 17
U.S.C. §§ 101-810 (1982 & Supp. IV 1986)), extend only
to "works of authorship fixed in [a] tangible medium of expression." 17 U.S.C. § 102 (a); see id.
§ 102(b); see also Mazer v. Stein, 347 U.S. 201, 217-18, 98 L. Ed. 630,
74 S. Ct. 460 (1954); Baker v. Selden,
101 U.S. 99, 25 L. Ed. 841 (1880). Here, that principle means that
CPI may not arrogate any legal rights in the "unprotectable [sic] idea
[of] a superhuman muscleman." Mattel, Inc. v.
Azrak-Hamway Int'l, Inc., 724 F.2d 357,
360 (2d Cir. 1983) (per curiam); cf. Nichols
v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) ("A comedy based upon conflicts between Irish and Jews, into
which the marriage of their children enters, is no more susceptible of
copyright than the outline of Romeo and Juliet.") (L. Hand, J.), cert.
denied, 282
U.S. 902, 75 L. Ed. 795, 51 S. Ct. 216 (1931).
Another basic precept holds that authors can only copyright expressions that
are "original." 17 U.S.C. § 102(a);
see U.S. Const. art. I, § 8,
cl. 8. In crafting their own work, of course, authors often borrow from the
opera of others. The results may still be copyrighted. 17
U.S.C. § 103(a) ("The subject matter of copyright . . .
includes compilations and derivative works"). In a previous decision in
this case, Judge Duffy wrote that CPI's Conan "unquestionably deriv[es]"
from Howard's [*359] Conan within the meaning of the Copyright Act. Conan Properties, Inc. v. Mattel, Inc., 601 F. Supp. 1179, 1182 (S.D.N.Y. 1984)
("Conan I"); see 17 U.S.C. § 101
("A 'derivative work' is a work based upon one or more preexisting works.").
CPI has never challenged this conclusion, and it is difficult indeed to imagine
how it could. Yet even a derivative work must be "original" to
warrant copyright protection, and although originality "need not be
invention in the sense of striking uniqueness, ingeniousness or novelty," L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir.), cert. denied, 429 U.S. 857, 50 L. Ed.
2d 135, 97 S. Ct. 156, 191 U.S.P.Q. (BNA) 588 (1976), a derivative
work must "contain[] some substantial, not merely trivial,
originality," Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir. 1980) (quoting Chamberlin v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir. 1945)); see Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 104-05 (2d Cir. 1951) (Frank, J.). Furthermore, "scenes a faire,"
or "incidents, characters, or settings which, as a practical matter, are
indispensable or standard in the treatment of a given topic," are not
protected either. Walker v. Time Life Films, Inc., 615 F. Supp. 430, 436 (S.D.N.Y. 1985), aff'd, 784 F.2d 44
(2d Cir.), cert. denied, 476 U.S. 1159, 90 L. Ed. 2d 721, 106 S. Ct. 2278 (1986);
see also Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir. 1976). Therefore, to warrant the protection of the Copyright
Act, a derivative work must contain "non-trivial" original aspects
distinct from both the underlying work in the public domain, and from the
scenes a faire that inhere in its genre.
Just what, if anything, original CPI has contributed is difficult to discern.
To begin with, Conan fits comfortably within the identifiable genus of
superhero musclemen, and most, if not all, of that fraternity look related. Cf.,
e.g., Walker v. Time Life, supra, 784 F.2d at 50. The Court has read comics starring characters named
"Atlas"; "Beowulf, Dragon Slayer"; "Hercules";
"John Carter, Warlord of Mars"; "Tarzan, Lord of the
Jungle"; and "Tor, the Caveman." All of the protagonists are
square-jawed and broad-shouldered. All are inordinately strong, and all wear
scraps of cloth that reveal every distended muscle. In the vernacular, they are
all "hunks." At oral argument, counsel for CPI insisted that its
Conan possesses a uniquely styled musculature, which differs significantly both
from the other superhero hunks of the fantasy comic world, and from the lithe,
swimmer-like Conan depicted in the illustrations that accompanied Howard's
books. See Transcript of oral
argument at 15-21 (Feb. 16, 1989); see also Deposition of A. Sidney Alpert at 571 (Feb. 14,
1985). The question is close. In deciding it the Court looks to the Second
Circuit's decision in Mattel, Inc. v. Azrak-Hamway
Int'l, Inc., 724 F.2d 357, 360 (2d Cir.
1983) (per curiam), where the panel held that the
"accentuat[ion] [of] certain muscle groups relative to others"
"constitute[s] the protectable [sic] expression of an idea" -- in
that case, the idea embodied in Mattel's He-Man doll. By analogy, this Court
finds CPI's contribution non-trivial, and nonstandard, enough to withstand an
attack on the validity of CPI's copyrights in the eight Conan comic books. See
id.; cf. Gracen v. Bradford Exch., 698 F.2d 300 (7th Cir. 1983) (painting of Dorothy derived from Wizard of Oz
photograph not original enough for protection despite "perceptible
differences"); Past Pluto Prods. Corp. v. Dana, 627 F. Supp. 1435 (S.D.N.Y. 1986) (not enough originality in foam crowns derived from
Statue of Liberty).
According to the express terms of the Copyright Act, however, CPI's Conan, as
depicted in the eight Marvel comic books, is only protected from infringement
to the extent of CPI's original contribution. See, e.g., Stodart v. Mutual Film Corp., 249 F. 507, 510 (S.D.N.Y. 1917) (L. Hand, J.), aff'd mem., 249 F. 513 (2d Cir.
1918) (per curiam). n9 The precise scope of CPI's copyrights would
normally be an issue of fact for trial. n10 Conan
I, supra, 601 F. Supp. at 1182. Yet no jury need consider this issue,
because whatever the exact scope of CPI's rights, CPI fails to raise a question
of fact concerning their infringement.
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n9 The Copyright Act explicitly provides that
the copyright in a . . . derivative work extends only to the material
contributed by the author of such work, as distinguished from the preexisting
material employed in the work, and does not imply any exclusive right in the
preexisting material. The copyright in such work is independent of, and does
not affect or enlarge the scope, duration, ownership, or subsistence of, any
copyright protection in the preexisting material.
17 U.S.C. § 103(b); see, e.g., Silverman v. CBS Inc., 870 F.2d 40, 49, 1989 U.S. App. LEXIS
3536 (2d Cir. 1989) ("a
copyright affords protection only for original works of authorship and,
consequently, copyrights in derivative works secure protection only for the
incremental additions of originality contributed by the authors of the
derivative works").
n10 CPI does not claim any protection in Conan's personality, which does not
seem, at least to this Court, to have evolved any since the 1930s. CPI's rights
can therefore only cover Conan's appearance. The Court notes in passing that
He-Man and Conan hold different world views.
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In its complaint, CPI alleges generally that Mattel's He-Man doll infringes its
copyrights in Conan. See 17 U.S.C. § 106 (listing "Exclusive
rights in copyrighted works"). More specifically, CPI contends, He-Man is
simply "Conan disguised with a blond wig." CPI's memorandum in
opposition to defendant's motion for summary judgment at 37. CPI offers no
direct evidence of copying; instead, CPI attempts to prove infringement
circumstantially. To do so, CPI must show, first, that Mattel had access to
Conan, and second, that Conan and He-Man are "substantially similar."
Walker v. Time Life, supra, 784 F.2d at 48; Eden
Toys, Inc. v. Marshall Field & Co.,
675 F.2d 498, 500 (2d Cir. 1982). Mattel categorically denies that
it ever had access to the Conan comic books, and CPI offers no proof of access
in response. This complete lack of evidence on an element of CPI's case would
ordinarily warrant the entry of summary judgment against it. Access may be
inferred, however, "if the plaintiff's work has been widely disseminated,
as by extensive publication." 3 M. Nimmer & D. Nimmer, The Law of
Copyright § 13.02 [A] (1987)
[hereinafter Nimmer]; see Detective Comics, Inc. v. Bruns Publications, Inc., 28 F. Supp. 399, 400 (S.D.N.Y. 1939), modified,
111 F.2d 432 (2d Cir. 1940); see also
Stratchborneo v. Arc Music Corp., 357 F. Supp. 1393, 1403 (S.D.N.Y.
1973) (Brieant, J.). The inference of
access is easily drawn from evidence of the sales figures of the Conan comics.
Yet "even clear and convincing evidence of access will not avoid the
necessity of also proving substantial similarity since access without
similarity cannot create the inference of copying." Nimmer, supra, § 13.03[D]. Even if the copyrights at issue are
given as broad a scope as CPI wants, CPI cannot demonstrate that the comparable
aspects of He-Man are substantially similar to the protected elements of Conan.
The Second Circuit test for substantial similarity is "whether an average
lay observer would recognize the alleged copy as having been appropriated from
the copyrighted work." Steinberg v. Columbia
Pictures Industries, Inc., 663 F. Supp.
706, 711 (S.D.N.Y. 1987) (quoting Ideal
Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021,
1022 (2d Cir. 1966)). In the words of Judge Learned Hand, two works
are substantially similar when "the ordinary observer, unless he set out
to detect the disparities, would be disposed to overlook them, and regard their
aesthetic appeal as the same." Peter Pan
Fabrics, Inc. v. Martin Weiner Corp.,
274 F.2d 487, 489 (2d Cir. 1960). n11 Although the question of
substantial similarity is usually one of fact, it may, if warranted, be decided
as a matter of law. E.g., Walker v. Time Life,
supra, 784 F.2d
at 48 (district court may grant
summary judgment "when the similarity concerns only noncopyrightable
elements of plaintiff's work, or when no reasonable trier of fact could find
the works substantially similar"); Warner
Bros. Inc. v. American Broadcasting Cos.,
720 F.2d 231, 240 (2d Cir. 1983). n12 Again, this Court is guided by the Second Circuit's decision
in Azrak-Hamway. In that case
Mattel had sought a preliminary injunction against a rival toymaker that,
Mattel charged, infringed Mattel's rights in its line of Masters of the
Universe toys (which includes He-Man). The district court held that Mattel had
not demonstrated "'either (1) a likelihood of success on the merits or (2)
sufficiently serious questions going to the merits to make them a fair ground
for litigation.'" 724 F.2d at 359
(quoting Jackson Dairy, Inc. v. H.P. Hood &
Sons, Inc., 596 F.2d 70, 72 (2d Cir.
1979)). The Second Circuit then affirmed. According to the panel,
"the district court reasonably found that the only parts of the dolls'
bodies that constitute the protectable [sic] expression of an idea" -- the
particular form of muscle development -- "were not substantially
similar." Id. at 360 (citing Ideal Toy Corp. v. Sayco Doll Corp., 302 F.2d 623, 627 (2d Cir. 1962) (Clark,
J., dissenting)). This Court has read the Conan comic books and examined the
He-Man doll. The protected elements of Conan and He-Man are not substantially
similar, n13 and no reasonable trier of fact could conclude otherwise. n14 See,
e.g., Walker v. Time Life, supra, 784 F.2d at 48-50; Hearn v. Meyer, 664 F. Supp. 832 (S.D.N.Y. 1987); Green v. Proctor & Gamble, Inc., 709 F. Supp. 418; 1989
U.S. Dist. LEXIS 2583(JFK) (S.D.N.Y. 1989); cf. Burroughs v. Metro-Goldwyn-Mayer, Inc., 683 F.2d 610 (2d Cir. 1982).
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n11 CPI suggests that the content of the Second Circuit test for substantial
similarity should depend on the relationship of the copyright owner and the
alleged infringer, but it offers no legal authority to support this
proposition. Nor does CPI explain why this Court should deviate from the
accepted test. As a result, the Court declines to do so.
n12 This Circuit retreated long ago from any intimation to the contrary in Arnstein v. Porter,
154 F.2d 464, 473 (2d Cir. 1946). See Smith
v. Weinstein,
578 F. Supp. 1297, 1302 (S.D.N.Y. 1984)
("courts in copyright actions are permitted 'to put "a swift end to
meritless litigation" and to avoid lengthy and costly trials'")
(quoting Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir.), cert.
denied, 449
U.S. 841, 66 L. Ed. 2d 49, 101 S. Ct. 121, 207 U.S.P.Q. (BNA) 1064 (1980)).
n13 Cf. Deposition of Mimi Shapiro
at 215 (Feb. 28, 1985).
n14 While strong, Conan is probably no more well-muscled than body-builder
Arnold Schwarzenegger, who played Conan in the film "Conan the
Barbarian." Indeed, the president of CPI explicitly confirmed that
comparison. See Affidavit of
Sanford D. Bronsther para. 4(m) (May 19, 1988) ("Schwarzenegger's
extraordinarily muscled body fit exactly the current CONAN image of ['fantasy
barbarian artist' Frank] Frazetta and Marvel [Comics]"). In 1977, shortly
after he won the Mr. Olympia title, Schwarzenegger's chest measured fifty-seven
inches, and his calves measured twenty inches. A. Schwarzenegger & D. Hall,
Arnold: Education of a Bodybuilder
(1977). A six foot two inch He-Man, in contrast, would have calves measuring
twenty-nine inches -- thirty-one percent larger than Schwarzenegger's -- and a
chest measuring seventy-one inches -- twenty percent larger than
Schwarzenegger's. Sworn declaration of Susan K.B. Urbas (Sept. 16, 1987). Cf.
Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1023 (2d Cir. 1966) ("distinct differences exist with respect to the
neck structures and hair styles, and to a lesser extent with respect to the
over-all craftsmanship").
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[And so, CPI’s copyright infringement count is
thrown out. The court next
addresses trademark infringement.]
III. Trademark Infringement
In its complaint CPI alleges that Mattel has sold toys "having appearance
and design features which are confusingly similar to the design and appearance
of Conan," and that that "constitutes false designation of
origin" in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982). n15 Third
amended complaint paras. 31, 32. As the Second Circuit has written, section
43(a)'s "purpose is to prevent consumer confusion regarding a product's
source, and to enable those that fashion a product to differentiate it from
others on the market." Centaur
Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1220 (2d Cir. 1987). 
To
succeed in its Lanham Act claim CPI must show that the Conan character
functions as a trademark -- that it has "secondary meaning" which
identifies its source; and that the similarities shared by Conan and He-Man are
likely to confuse consumers about that source. Id. at 1221.
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n15 
Section
43(a) provides:
Any person who shall affix, apply, or annex, or use in connection with any
goods . . ., a false designation of origin, or any false description or
representation, including words or other symbols tending falsely to describe or
represent the same, and shall cause such goods . . . to enter into commerce, .
. . shall be liable to a civil action by any person doing business in the
locality falsely indicated as that of origin or in the region in which said
locality is situated, or by any person who believes that he is or likely to be
damaged by the use of any such false description or representation.
15 U.S.C. § 1125(a) (1982).
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Although CPI offers no actual evidence of secondary meaning, in the license
agreement it signed with Conan Licensing Co. Mattel explicitly
"recognize[d] the great value of the goodwill associated with CONAN, and
acknowledge[d] that . . . the name and trademark CONAN has a substantial
secondary meaning in the mind of the public." Conan Licensing Agreement
para. 4, at 9 (July 31, 1981) [hereinafter License]; see also id. at 1 (Conan "is well known and recognized by the general public
and is associated in the public mind with [CPI]"). Mattel's concession is
not enough, for "'proof 
of
secondary meaning entails . . . rigorous evidentiary requirements.'" Motown Prods., Inc. v. Cacomm, Inc., 668 F. Supp. 285, 289 (S.D.N.Y. 1987), rev'd
on other grounds, 849 F.2d 781 (2d Cir. 1988). See generally Centaur Communications, 830 F.2d at 1221-25. n16 Even assuming that Conan the Barbarian does have
secondary meaning, however, CPI has failed to show consumer confusion. See,
e.g., Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 115-20 (2d Cir. 1984).
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n16 According to the court in Motown Prods., "the 
most
important indicia of secondary meaning are advertising expenditures, consumer
studies linking the name to a source, sales success, unsolicited media coverage
of the product, attempts to plagiarize the mark, and length and exclusivity of
the mark's use." 668 F. Supp. at 289;
see Centaur Communications, supra, 830 F.2d at 1221 ("focus of secondary meaning . . . is the
consuming public").
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Lanham Act claims are often appended to copyright actions, and often, as here,
the legal considerations in copyright apply to trademark law. Thus, "the
absence of substantial similarity [for the purposes of a copyright action]
leaves little basis for asserting a likelihood of confusion or palming off for
purposes of a claim under § 43(a) of the Lanham Act." Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 246 (2d Cir. 1983) (quoting Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 918 (2d Cir. 1980)); cf. Centaur Communications, supra, 830 F.2d at 1225 (discussing "multifactor balancing test"
set out in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.), cert.
denied, 368
U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36, 131 U.S.P.Q. (BNA) 499 (1961)).
CPI does put forth proof showing that "on occasion" children visiting
local toy stores mistook an actor clothed like He-Man for Conan. Affidavit of
Daniel J. Sapinkopf (Mar. 30, 1988). Yet there is no showing that the doll
itself was the subject of confusion, and no human being -- not even Arnold
Schwarzenegger -- could really do He-Man justice. The case law makes clear,
moreover, that even that quantum of evidence of actual confusion is not weighty
enough to withstand a motion for summary judgment. E.g., Warner Bros., supra, 720 F.2d at 246 (although "some" television viewers might
confuse bumbling "Greatest American Hero" with Superman, not enough
evidence of likelihood of confusion to raise factual question for jury);
cf. Mattel, Inc. v. Azrak-Hamway Int'l, Inc., 724 F.2d 357, 361 (2d Cir. 1983) (per curiam) ("what has become a usual way to
demonstrate . . . consumer confusion . . ., in a case where the existence of .
. . consumer confusion is not otherwise obvious, is for the proponent to
undertake some form of survey of consumer attitudes under actual market
conditions"); Essence Communications, Inc.
v. Singh Indus., Inc., 703 F. Supp.
261, 269 (S.D.N.Y. 1988).
CPI's complaint also alleges unfair competition under New York common law and
dilution in violation of the New York antidilution statute, 
N.Y.
Gen. Bus. Law § 368-d (McKinney 1989). n17 To the extent that CPI's New
York cause of action for unfair competition is not preempted by the Copyright
Act, n18 CPI must still show a likelihood of confusion. CPI's claim should
therefore fail for the reasons discussed above. The New York statute does not
require likelihood of confusion, but it does require that a plaintiff's
distinctive mark be "diluted" -- that is, "blurred" or
"tarnished." As Mattel points out, however, CPI offers no evidence at
all that Mattel's He-Man has blurred or tarnished CPI's Conan trademark. See,
e.g., Computer Assocs. Int'l, Inc. v. Computer
Automation, Inc.,
678 F. Supp. 424, 429 (S.D.N.Y. 1987);
see also Celotex Corp. v. Catrett, 477 U.S. 317, 325, 91 L. Ed. 2d 265,
106 S. Ct. 2548 (1986). Summary
judgment is appropriate here as well.
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n17 "Likelihood of injury to business reputation or of dilution of the
distinctive quality of a mark or trade name shall be a ground for injunctive
relief in cases of . . . unfair competition, notwithstanding the absence of competition
between the parties or the absence of confusion as to the source of goods or
services." N.Y. Gen. Bus. Law § 368-d (McKinney 1989).
n18 
The
Copyright Act preempts "all legal or equitable rights that are equivalent
to any of the exclusive rights within the general scope of copyright as
specified" in the statute itself. 17 U.S.C.
§ 301(a). The Second Circuit has interpreted this to mean that
the Act preempts "state law claims that rely on the misappropriation
branch of unfair competition . . . [but not] state unfair competition [claims
that] allege a tort of 'passing off.'" Warner
Bros. Inc. v. American Broadcasting Cos.,
720 F.2d 231, 247 (2d Cir. 1983). Here, CPI's complaint suggests
that it charges Mattel with misappropriation.
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. . . .
And so, the court throws out all their remaining
claims regarding trademark and related issues. There were still some contract issues to address, and those
apparently settled prior to the court issuing a final verdict, as this is the
last opinion on this case to be published, save for an
“unpublished” opinion regarding some motions to reconsider which
the court declined.
Basically, CPI greatly limited their IP rights in the
case by merely claiming the musculature as shown in eight comic books, and
claiming no other basis for IP. It
is to wonder why. Perhaps they had
not gotten around to recording transfers in the Copyright Office. Perhaps they thought there were other
faults with their claims to earlier rights. Or perhaps they thought the few comic books were enough,
that the appearance really was the issue when it comes to toys called something
other than “Conan”.
Importantly, CPI did not get into an argument over whether Conan the
Literary Character was copyrightable.
It would be interesting to see how CPI (or whoever the current
“right holders” are) would fare in a case involving books or movies. Given the Zorro case that is ongoing,
perhaps we will find out in the not too distant future.
And as a little extra, as there are so few cases
dealing with copyrights in literary characters, here is some language from one
of the most often cited case, Warner Bros. v. CBS, 216 F.2d 945, US Court of
Appeals for the Second Circuit, 1955, involving Dashiel Hammett and his
immortal character Sam Spade.
Warner Bros. had acquired rights to the story The Maltese Falcon from
Hammett. Hammett continued to
write stories using the Sam Spade character, and Warner Bros. sued to stop
him. The following has been quoted
for the proposition that Sam Spade was not copyrightable. Do you agree with that interpretation
of the following?
The practice of writers to compose sequels to stories is old, and the
copyright statute, though amended several times, has never specifically
mentioned the point. It does not appear that it has ever been adjudicated,
although it is mentioned in Nichols v. Universal
Pictures Corp., 2 Cir., 1930, 45 F.2d 119. If Congress had intended
that the sale of the right to publish a copyrighted story would foreclose the
author's use of its characters in subsequent works for the life of the
copyright, it would seem Congress would have made specific provision therefor.
Authors work for the love of their art no more than other professional people
work in other lines of work for the love of it. There is the financial motive
as well. The characters of an author's imagination and the art of his
descriptive talent, like a painter's or like a person with his penmanship, are
always limited and always fall into limited patterns. n5 The restriction
argued for is unreasonable, and would effect the very opposite of the statute's
purpose which is to encourage the production of the arts.
. . .
It is conceivable that the character really constitutes the story being told,
but if the character is only the chessman in the game of telling the story he
is not within the area of the protection afforded by the copyright. The subject
is given consideration in the Nichols case, supra, 45
F.2d at page 121 of the citation. At page 122 of 45 F.2d of the same
case the court remarks that the line between infringement and non-infringement
is indefinite and may seem arbitrary when drawn; nevertheless it must be drawn.
Nichols v. Universal Pictures Corp., 2 Cir., 1930,
45 F.2d 119. See Warner Bros. Pictures
v. Majestic Pictures Corp., 2 Cir., 70 F.2d 310, 311.
We conclude that even if the Owners assigned their complete rights in the
copyright to the Falcon, such assignment did not prevent the author from using
the characters used therein, in other stories. The characters were vehicles for
the story told, and the vehicles did not go with the sale of the story.