Magic Marketing, Inc. v. Mailing Services of Pittsburgh, Inc.
634 F. Supp 769, 230 U.S.P.Q. (BNA) 230, 1986 U.S. Dist. LEXIS 26016 (1986)
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Rule of Law:
Short, common phrases, familiar symbols, and simple typographic or geometric designs printed on a useful article, such as an envelope, lack the minimal degree of creativity required for copyright protection.
Facts:
- Magic Marketing, Inc. designs and markets mass mailing advertising campaigns.
- In December 1983, Magic Marketing contracted with Mailing Services of Pittsburgh, Inc. to supply letters, forms, and envelopes for its campaigns.
- Mailing Services subcontracted a portion of the printing work to American Paper Products Company.
- Magic Marketing designed two envelopes at issue. One featured a solid black horizontal stripe with the words 'PRIORITY MESSAGE: CONTENTS REQUIRE IMMEDIATE ATTENTION' and the word 'TELEGRAM' in a smaller stripe.
- The other envelope featured the words 'GIFT CHECK ENCLOSED' printed in bold letters above the window.
- Magic Marketing imprinted '© 1984 Magic Marketing Inc.' on the back of both envelope designs.
- Magic Marketing alleged that American Paper manufactured and supplied infringing copies of these envelopes to other customers.
Procedural Posture:
- Magic Marketing, Inc. filed a complaint in federal district court against Mailing Services of Pittsburgh, Inc. and American Paper Products Company, alleging copyright infringement (count one) among other claims.
- By a prior court order, counts two and three of the complaint were dismissed as against defendant American Paper Products Company.
- American Paper Products Company then moved for summary judgment on the remaining copyright infringement claim, arguing that the envelopes at issue are not copyrightable as a matter of law.
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Issue:
Do short, descriptive phrases and simple graphic elements printed on mailing envelopes possess the requisite originality and separability from the article's utilitarian function to qualify for copyright protection?
Opinions:
Majority - Ziegler, District Judge
No, the short phrases and simple graphic elements on the envelopes do not possess the requisite originality or separability to qualify for copyright protection. To be copyrightable, a work must meet a threshold of originality, which requires more than a trivial variation of a previous work. The phrases on the envelopes, such as 'PRIORITY MESSAGE' and 'GIFT CHECK ENCLOSED,' are merely short, descriptive phrases that function as a list of contents or instructions, which are explicitly not copyrightable under 37 C.F.R. § 202.1(a). Similarly, the graphic elements, like a solid black stripe or a distinctive typeface, are familiar symbols and mere variations of typographic ornamentation that lack the minimal creativity needed. Furthermore, because the envelopes are 'useful articles,' any design elements would need to be physically or conceptually separable from the envelope's utilitarian function to be protected as a pictorial, graphic, or sculptural work; here, the text and stripes are not separable features that could stand alone as a work of art.
Analysis:
This decision reinforces the copyright principle that functional items and common expressions are part of the public domain. It clarifies that merely combining unprotectable elements, such as short phrases and simple geometric shapes, does not automatically create a copyrightable work. The case serves as a gatekeeper, preventing copyright law from extending to the basic building blocks of language and design used in commercial communication. It solidifies the distinction between creative expression, which copyright protects, and functional, unoriginal content, which it does not, particularly in the context of commercial and advertising materials.
