This case falls within the ambit of
Desny
v.
Wilder,
A jury awarded plaintiff a recovery in the sum of $35,000. Motion for directed verdict had been made and denied; this was followed by a motion for judgment notwithstanding the verdict, which was granted. Plaintiff has appealed from that order and from the judgment entered pursuant thereto. As the order is not appealable
(Schramko
v.
Saulter,
The applicable rule of review is stated in
Estate of Arnold,
Plaintiff’s proffered premium was a kit for making sun pictures, a thing which he had done as a boy, as had many other boys. It consisted of a black opaque envelope in which were contained a collapsed cardboard holder, a negative consisting of a picture printed on cellophane and two pieces of sensitized paper. The idea was that a child could use this kit to create a picture through his own efforts. The process is simple; the sensitized paper is inserted in the holder and the cellophane printed negative superimposed over it. Upon exposure to the sun the picture of the negative is printed upon the sensitized paper.
Through expenditure of much effort and substantial monies plaintiff had brought this concrete expression of his idea to the point where he thought it marketable. So he called the Los Angeles office of defendant General Mills, Inc., and inquired whether anyone there could purchase premium items and was told to contact Mr. Otis Young of the San Francisco office, that he was the one who could purchase those items. Mr. Young was advertising and sales promotion manager of Sperry Operations, which was a geographical division of General Mills, Inc., and in no sense a separate entity although it was largely autonomous, distributing grocery products in the western portion of the United States. The headquarters of General Mills, Inc., was in Minneapolis. Mr. Young had sole responsibility of procuring premiums for Sperry products but he testified that none of them have appeal for children; that that division did not use “kids’ ” premiums. Mr. Young had no duty to report his premium activities to the head office, which was located in Minneapolis.
On July 6, 1955, plaintiff wrote Mr. Young advising that “I have developed a new children do-it-yourself item in the photographic field. I feel it would make an excellent premium item for your company. ... I have never offered this to anyone and I would like to make an appointment preferably on a Monday with you and discuss its possibilities.” On the 8th he received from Mr. Young an answer, “with regard to a premium item which you have developed for us in the children’s field.” He also suggested that plaintiff call on him on the 18th. Before that date arrived Young telephoned plaintiff *796 from San Francisco postponing the meeting to July 20th. In that conversation he said that if plaintiff's item was accepted some six to seventeen million of them could be bought. On July 20th plaintiff called at Young’s San Francisco office. There was also present Mr. Lawrence D. Dunham who was vice president of an advertising firm which worked with the personnel of General Mills, being in constant touch with Sperry Operations and having nothing to do with General Mills national products. There were also present two other men of the defendant company, “observers or executives” whose names plaintiff could not remember at the trial. Plaintiff testified: “After the introductions I told Mr. Young that I would be willing to disclose this premium idea to him if he expressly understood that if he used my premium item I would be paid for it and he agreed. . . . Q. You say ‘he agreed.’ That is your conclusion. It may be stricken. What did he say? A. He said ‘Yes, I would if I used it.’ ” Plaintiff thereupon disclosed his idea and the kit; demonstrated the making of a picture with it. Young “was quite surprised at what he saw and they all seemed to be elated with the results. They thought it would be quite a nice premium. They said it would be a nice premium for the youngsters, they would have something that they could make themselves and it would give them satisfaction that they were able to develop their own pictures.” The question of permanency of the picture was raised and plaintiff said it would last possibly six hours to six months if not further exposed to light. He was asked “whether there was a probability of getting some permanency in the negative. I told them that could be obtained, that I would have to work on that when I arrived back at Los Angeles. They seemed satisfied with what they saw. I left some samples there, I was asked to, and said goodbye to the gentlemen and went on home.” Young’s testimony differed in some substantial respects, denying that Teich said that he wanted it understood before showing his premium item that if Young liked it he would be paid for it, or that he told plaintiff that if the item was something that he, Young, liked he would be happy to pay plaintiff for it. But he also testified: “ Q. . . . Well, when he came to the office and displayed his item, did you look at it with the expectation that if you used it, you would pay him for it? A. Pay him for the premium? Q. Yes. A. Certainly.” Again: “Q. And you knew at that time that he was disclosing it and demonstrating it to you with the expectation if you used it he would receive some compensation *797 for it; isn’t that true? A. I always assume that.” Unquestionably plaintiff established a contract on the part of defendant to pay for his idea if used by it. However, from that day Mr. Young ignored him.
On July 22d plaintiff wrote Young that he had achieved permanency of picture by using a different type of paper and a fixer or hypo. Receiving no response plaintiff waited about a week and then sent a night letter which was almost a duplicate of the communication of the 22d; it met with silence. Then plaintiff tried to get Young on the telephone but was told he was “not available.”
In January, 1956, plaintiff saw for the first time a package of General Mills cereal known as Trix which showed on the outside that it contained a “Magic Sun Picture.” Buying and opening one he found a kit bearing marked similarity to his own. The basic principle was the same but there were differences in details. The negative and paper were smaller in size than plaintiff's; the negative was about one-third of the thickness of his own but it was cellophane, or acetate as respondent calls it. Defendant’s negative was printed by rotogravure process, while plaintiff's was done with rubber dies or plates. There were no other substantial differences. Testing showed that the sun picture produced by a Trix kit had no more permanency than plaintiff’s own. So marked was the similarity of the two kits that Mr. Young, when he first learned of the Trix premium through a “planning letter” from the Minneapolis office, was amazed. He testified: “Well, I would like to give you my reaction when I got this planning letter. Q. Yes. I would appreciate it. A. I thought to myself,‘Holy smoke! Did I miss one out here ? ’ Q. I see. Did you think that Mr. Teich had gone to Minneapolis and sold— A. That’s right, yes. Q. —his idea to Minneapolis? A. That’s right. And as I recall the premium itself, it was small and to me it appeared something like the one Mr. Teich had.” Also: “It was, I think, alike in the approximate size of the thing, and generally in the method of handling the thing it seemed to be basically the same procedure.” Young also called Dunham and “gave him the same reaction. I said, ‘Do you suppose we missed one out here?’ ” Dunham testified: “I think I can remember his exact words. He said: ‘I wonder if we passed something up here. “Trix” has a premium similar to the one we looked at last summer.’ ”
A showing of access and similarity raises an inference of copying.
(Golding
v.
R.K.O. Pictures, Inc.,
35 Cal.2d
*798
690, 695 [221 P.2d
95]; Kovacs
v.
Mutual Broadcasting System,
Mr. Young’s reaction to the Trix kit is enough to show that a question of fact was presented at bar, necessitating an initial assumption by the trial judge and this court that there was copying and use by defendant of plaintiff’s idea and its concrete expression contrary to the contract it had made with him. Although Mr. Young denied any communication with the Minneapolis office, or anyone other than Dunham, concerning plaintiff’s disclosed idea, and also denied knowing what was occurring in Minneapolis or elsewhere with reference to a sun picture premium idea and kit, his testimony and that of Mr. Dunham was so squarely opposed to plaintiff’s upon the principal issue of contract that the jury, disbelieving them in that respect, was entitled to reject the further assertion *799 that his idea was not passed on to the Minneapolis office. There were also other circumstances shown by the transcript which would warrant rejection of the testimony of both Young and Dunham. We must recognize therefore the existence of an inference of copying and use of plaintiff’s idea.
Respondent counters this with the argument that that inference was dispelled by evidence which showed conclusively that there was no copying. Reliance is placed upon decisions such as
Leonard
v.
Watsonville Community Hospital,
Defendant’s proof shows that the idea of sun pictures is an old one; that its adaptation to a premium for cereals and like products because of appeal to children was developed independently and without any knowledge of anything that plaintiff had done or of anything that had passed between plaintiff and Young; that the idea and the kit which were adopted for use in Trix packages were independently conceived and developed by Messrs. Herbert S. Valentine, Jr. and Earl K. Radford, Jr., who conducted an advertising agency in Kansas City under the name Valentine-Radford; neither of them had had any contacts with General Mills prior to writing to the Minneapolis office on May 27, 1955. Defendant produced as witnesses at the trial the following persons who supported the defense thesis, were not contradicted, nor were they impeached by cross-examination or in any other manner, viz., Lowry H. Crites of Minneapolis, who was advertising
*800
manager of General Mills for all nationally marketed cereals; James Street of St. Louis (by deposition), who was premium manager of General Mills in Minneapolis throughout 1955; Herbert S. Valentine, Jr. of Kansas City, partner in Valentine-Radford advertising agency, who developed and sold to General Mills the Trix premium. This uncontradicted evidence could not be rejected.
Estate of Kuttler,
The testimony of Messrs. Crites, Street and Valentine was buttressed by a line of correspondence which plaintiff's attorney stipulated to be genuine, the letters having been sent by the respective writers on or about the dates they bear and received in due course of mail by the respective addresses.
On May 27, 1955, Mr. Valentine wrote to “Premium Manager, Sales Division, General Mills, Inc.” at Minneapolis, concerning the sun picture kit which he ultimately sold to that *801 company and which was used in Trix cereal. He said: “A client of ours is about to market a new idea for children that would appear to have real potential as a premium for a cereal manufacturer. I am not at liberty to send you a sample at this time, but would appreciate some general information for our guidance.’’ (Incidentally, he was his own “client.”) On June 17 Mr. Street replied, saying in part: “Perhaps the easiest way to tell whether your client’s item is a satisfactory cereal premium, would be to brief me on a non-confidential basis with a few more details. ... If you would be kind enough to let your hair down and tell me what I’m evaluating, I would be glad to do it. Hoping to hear from you again.” On June 22d Valentine wrote Street for more information concerning General Mills’ use of premiums. This information was sent him by Street on June 29th. A month later, on July 29th, Valentine sent to Street a brochure disclosing the details of his sun pictures, also a negative and some film. This was his first disclosure. This was followed by additional correspondence of August 11th and August 18th. Mr. Street evaluated Valentine’s product, which was called “Sun Pix,” and concluded that it was a good item, not new, but met all requirements, and that he would recommend it for use if the opportunity came along. Then there was an agreed “option,” extending for a reasonable time, to enable General Mills to decide whether to buy; this by letter of August 19th. After more letters extending through the rest of the year, a sale was made by Valentine to General Mills and the first purchase order was received by him on January 16, 1956. It was an order for 6,250,000 “Sun Pix” premium packages. Sales of kits were then made to General Mills in an aggregate amount of $70,000 to $72,000.
Though the differences between plaintiff’s kit and that found in Trix packages were insignificant, that portion of the stipulated correspondence which relates to minutiae of “Sun Pix” has a definite probative bearing upon the question of independent development by the firm of Valentine-Radford. Before plaintiff’s disclosure to Young on July 20, 1955, the following letters passed between Valentine-Radford and third parties.
On June 1, 1955, Valentine-Radford wrote to Walt Disney Enterprises inquiring about the use of Disney characters and the Disney name on their package. In this letter it is stated: “I have worked out a novel kit for children that enables them *802 to reproduce photographs from film. The kit will probably contain five films and will retail for 50¢.” [This ties in with their first letter to General Mills, dated May 27, 1955, in which they do not disclose what their suggested premium item is, other than that it is a new idea for children, approximately 2" x 2", which would retail for 50¢.]
On the same date, June 1st, they also wrote to Holiday Plastics, Inc. asking for prices on different quantities and weights of acetate. The letter indicates a prior meeting between these parties at which the “project” was discussed.
On June 9, 1955, Valentine received a letter from Eastman Kodak Company (a follow-up to its letter of June 1) advising that they had referred “your problem of a suitable method for packaging 2" x 2" Kodak Studio Proof Paper along with a film negative to our Paper Division Laboratories for investigation, ” and requesting further information.
On June 13, 1955, Valentine-Radford was advised by letter that a search of the Patent Office records had been made with regard to the trade-mark “Sun Pix” and that same was open for use.
June 22,1955, Valentine-Radford wrote to Highland Supply Company requesting prices for printing on acetate, stating “I am interested in printing on acetate photos similar to the attached sample. These halftones would be printed in black ink at least 120 line screen and trimmed 2" square. They would be printed on Dupont acetate film #200 in the rigid variety or equivalent in some other make. . . . This printing could be done either rotogravure or letterpress, depending upon the quality and your equipment. . . . I would also like to receive from you samples of the acetate on which you make your estimates.”
On July 7, 1955, Milprint, Inc., of Milwaukee, Wisconsin, a company engaged in packaging materials, lithography and printing, wrote to Valentine and Radford, per request, quoting prices on three different gauges of Acetate, to be “printed 1 color 1 side . . . trim size 2 inches by 2 inches. ... It is our understanding that a retouched photograph will be furnished to us. The plates would be charged extra at $85.”
We are satisfied that defendant proved conclusively the fact of independent development of “Sun Pix” by Valentine and his partner, and an independent sale of same to General Mills; that this business was conducted entirely through the Minneapolis office without knowledge of plaintiff’s idea, kit or contract with Young of the Sperry division.
*803 Our problem is thus narrowed to the question whether the defense of purchase from an independent developer of an item closely similar to plaintiff’s is a good defense. In other words, does proof that there was no copying of plaintiff’s product make a complete defense, although the thing actually used by defendant was closely similar to the one which plaintiff had presented to it? The authorities require an affirmative answer.
Respondent calls attention to this language of the Desny case,
supra,
Golding
v.
R.K.O. Pictures, Inc., supra,
The solution of the question of whether proof of absence of copying establishes a complete defense is governed by the same principle whether the action be one for infringement of a statutory copyright or a “common law” copyright. (See
Golding
v.
R.K.O. Pictures, Inc., supra,
Barsha
v.
Metro-Goldwyn-Mayer,
Harold Lloyd Corporation
v.
Witwer
(9 C.C.A.),
“ ‘There can be no infringement unless there has been a copying either in whole or in part of the copy-righted work. Some copying is necessary to constitute infringement.’ 13 C.J. § 277, note 41, and cases.
“ ‘Since there can be no infringement of copyright without some copying the mere fact of similarity or even identity between two works does not of itself make one an infringement of the other.’ 13 C.J. § 278.
“ The rule is well stated by Judge Learned Hand in the case of
Fisher, Inc.
v.
Dillingham
(D.C.)
Volume 18, Corpus Juris Secundum, section 94b, page 216: ‘‘There can be no infringement unless there has been a copying, either in whole or in part, of the copyrighted work, and hence the mere fact of similarity, or even identity, between two works does not of itself make one an infringement of the other. ... As stated supra § 25, both works may be entitled to copyright, although identical, if each is an original and inde *805 pendent production, and similarity or identity is merely evidence of copying—more or less strong according to circumstances and the explanations which may be made of it, as shown infra § 156. It is only where the similarity or identity is due to copying from the copyrighted work that the later work may be deemed an infringement.” Id. section 111, page 227: “Test of piracy. It has been laid down as the clear result of the authorities in eases of this nature that the true test of piracy is to ascertain whether the author of the alleged piratical work has in fact used the plan, arrangement, and illustrations of the copyrighted work as the model of his own work, with colorable alterations and variations only, to disguise the use thereof, or whether the work is the result of his own labor, skill, and use of common materials and common sources of knowledge open to all men, and whether the resemblances are either accidental or arising from the nature of the subject. The question is always simply one of fact, whether defendant copied the matter from complainant’s book or obtained it by his own skill and labor from the common source.”
Volume 23, American Law Reports 2d 244, 369, paragraph 42: “Anno: Literary or Artistic Property Rights” : “If defendant created his work by independent effort or bought a work created independently of any other work, the fact that the work strongly resembles plaintiff’s work does not amount to an infringement, for there is no copying. See section 28, supra.” (See also § 29, at p. 340.)
To the same effect are:
Moore
v.
Ford Motor Co.
(2 C.C.A.),
In the instant case it follows from the absence of copying that plaintiff has no cause of action. As the Supreme Court said in
Dun
v.
Lumbermen’s Credit Assn.,
Appeal from order dismissed. Judgment affirmed.
Fox, P. J., and Herndon, J., concurred.
Appellant’s petition for a hearing by the Supreme Court was denied July 22, 1959.
