Page:Herbert Rosenthal Jewelry v. Kalpakian.pdf/3

 whether the line of cases upon which the assumption is based, see Siebring v. Hansen, 346 F.2d 474, 477 (8th Cir. 1965), and cases cited, survived Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969), and in this circuit, Massillon-Cleveland-Akron Sign Co. v. Golden State Advertising Co., 444 F.2d 425 (9th Cir. 1971). See also, [sic] Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971).

Plaintiff contends that its copyright registration of a jeweled bee entitles it to protection from the manufacture and sale by others of any object that to the ordinary observer is substantially similar in appearance. The breadth of this claim is evident. For example, while a photograph of the copyrighted bee pin attached to the complaint depicts a bee with nineteen small white jewels on its back, plaintiff argues that its copyright is infringed by defendants’ entire line of a score or more jeweled bees in three sizes decorated with from nine to thirty jewels of various sizes, kinds, and colors.

Although plaintiff’s counsel asserted that the originality of plaintiff’s bee pin lay in a particular arrangement of jewels on the top of the pin, the elements of this arrangement were never identified. Defendants’ witnesses testified that the “arrangement” was simply a function of the size and form of the bee pin and the size of the jewels used. Plaintiff’s counsel, repeatedly pressed by the district judge, was unable to suggest how jewels might be placed on the back of a pin in the shape of a bee without infringing plaintiff’s copyright. He eventually conceded, “not being a jeweler, I can’t conceive of how he might rearrange the design so it is dissimilar.”

If plaintiff’s understanding of its rights were correct, its copyright would effectively prevent others from engaging in the business of manufacturing and selling jeweled bees. We think plaintiff confuses the balance Congress struck between protection and competition under the Patent Act and the Copyright Act.

The owner of a patent is granted the exclusive right to exploit for a period of seventeen years (a maximum of fourteen years for design patents) the conception that is the subject matter of the patent. 35 U.S.C. §§ 154, 173. The grant of this monopoly, however, is carefully circumscribed by substantive and procedural protections. To be patentable the subject matter must be new and useful, and represent a nonobvious advance—one requiring “more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business”; an advance that would not be obvious to a hypothetical person skilled in the art and charged with knowledge of all relevant developments publicly known to that point in time. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). A patent is granted only after an independent administrative inquiry and determination that these substantive standards have been met. 35 U.S.C. § 131. This determination is subject to both administrative and court review. 35 U.S.C. §§ 134, 141, 145, 146.

Copyright registration, on the other hand, confers no right at all to the conception reflected in the registered subject matter. “Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself.” Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954) (footnote omitted). Accordingly, the prerequisites for copyright registration are minimal. The work offered for registration need only be the product of the registrant. So long as it is not a plagiarized copy of another’s effort, there is no requirement that the work differ substantially from prior works or that it contribute anything of value. “The copyright protects originality rather than novelty or invention.” Id. at 218, 74 S.Ct. at 471. A copyright is secured simply by publishing the work with the required notice, 17 U.S.C. § 10, and