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.