author: MIHM, District Judge.

text:
    UNITED STATES of America, Plaintiff, v. REPUBLIC MARINE, INC., and Conticarriers and Terminals, Inc., In Personam, and M/V C.R. CLEMENTS, BARGE CCT 124, BARGE CCT 130, BARGE CNG 48B, BARGE GNC 265, BARGE SG 106, and BARGE DK 103, In Rem, Defendants. CONTICARRIERS AND TERMINALS, INC., Defendant/Third Party Plaintiff, v. DRAVO CORPORATION, Third Party Defendant.
    No. 85-4148.
    United States District Court, C.D. Illinois, Rock Island Division.
    Feb. 10, 1986.

      L. Lee Smith, Asst. U.S. Atty., Peoria, Ill., for plaintiff.
    Thomas N. Kamp, Davenport, Iowa and E. Spivey Gault, Greenville, Miss., for Republic.
    Michael A. Snyder, Chicago, Ill., for Con-ticarriers.
    Greg A. Egbers, Davenport, Iowa, for Dravo.
   MEMORANDUM OPINION AND ORDER

MIHM, District Judge.

This case involves a suit brought by the United States for damage to the wall of a lock on the Mississippi River. The case presents some issues that are matters of admiralty law, as well as legal issues regarding the meaning and scope of a number of United States statutes. The Court held a bench trial on October 16, 1985, and the following are the Court’s findings of fact and conclusions of law.

On August 17, 1979, the M/V C.R. Clements was pushing a tow of 15 empty grain barges up the Mississippi River. The M/V C.R. Clements is owned and operated by the Defendant, Republic Marine, and at that time was under the command of Pilot Omar Keel. The tow was arranged in three strings of five barges each, and the complete tow measured approximately 105 feet wide by 975 feet long. The tow boat was faced up to the last barge in the center. Barge CCT-124 was the stern-most barge in the starboard (right) string. The Defendant, ContiCarriers and Terminals, Inc., is the owner of barge CCT-124 for purposes of this suit, because it had bare-boat chartered the barge from its owner, Republic National Leasing Corporation.

As part of its trip upriver, the tow boat and its barges had to navigate through Lock and Dam Number 21, located on the Mississippi River near Quincy, Illinois. Lock and Dam Number 21 was built in 1939 by the United States Army Corps of Engineers, which has operated the facility since its construction. Lock and Dam Number 21 was built by the Plaintiff, the United States of America, for the preservation and improvement of the navigable waters of this nation.

Because the lock chamber at Lock 21 is only 600 feet long by 110 feet wide, the tow boat had to divide the tow into two separate “cuts” of barges in order to pass through the lock. The tow boat and its barges approached the lock shortly after noon on August 17, 1979. At that time the lock was being operated by lockmen Jerome Peter and Leonard Whipps, who directed the procedures for entering and exiting the lock. The M/V C.R. Clements pushed the forward nine barges of its tow into the lock chamber of Lock 21 and this first cut of barges passed through the lock without incident and caused no damage to the lock.

Following the lockage of the first cut, the lockmen reduced the water level in the lock so that the second cut of barges and the tow boat could enter. The second cut consisted of six barges, two long and three wide, and the M/V C.R. Clements itself.

Prior to the second cut entering the lock, the barges and the tow boat lay along the downstream guide wall of the lock, located on the Illinois side of the lock facility. As the lock employees lowered the water level in the lock chamber, the turbulence caused the boat and its tow to swing out at a slight angle from the guide wall. Lockman Jerome Peter advised Captain Keel that his stern was too wide, and that he would have to get closer to the east (Illinois) wall before he could enter the lock. Lockman Peter also advised the Captain to keep the starboard side of his tow close to the east side of the lock because repairs were being made to the concrete structure on the west side of the lock opening. Captain Keel complied with these orders, and in doing so the starboard side of his tow came into contact with the east guide wall at a point downriver from where the lock wall was subsequently damaged.

The lock gate is hinged in a recess in the wall of the lock chamber in such a way that when fully opened, the gate, lying within the recess, forms a flush surface along which the tows can be pushed. The vertical outside corner formed by the lock wall and the downstream end of the gate is protected by a steel angle called an armor plate, designed to protect the concrete corner of the lock wall. The armor plate is approximately 15 feet long, with each side of the plate approximately six inches in width and about % inch thick. The armor plate is set into the concrete corner of the lock wall in such a manner so as to present a flush surface with the wall and protect the edge of the concrete wall from damage when barges rub against it.

The Barge CCT-124 is 35 feet wide, 200 feet long, and 12 feet deep. Fitted to each side, approximately 23 inches below the deck were three rub bars, one near each end of the barge and one mid-ship. The rub bar is a % inch thick steel plate, extending about eight inches high and 36 inches forward and aft. The rub bar acts as a buffer to prevent damage to the wall of the barge when it comes into contact with anything.

As the tow boat pushed the second cut of barges into the lock, Captain Keel kept the starboard side of the tow sliding along the east wall of the lock. The lock chamber is 110 feet wide, only five feet wider than the tow being pushed by M/V C.R. Clements. In order to enter the lock, the tow had to be lined up almost exactly straight with the entrance of the lock chamber, and the best way for the tow to stay away from the west side of the lock was to slide along the east wall of the lock chamber.

While the tow boat pushed the second section of barges into the lock, Barge CCT-124 caught on the armor plate and pulled loose from the wall both the armor plate and some attached concrete. The United States Army Corps of Engineers made emergency repairs to the corner of the lock wall immediately after the collision. The Corps began the major repair work in January, 1980, and completed the repairs in February, 1980, restoring the armor plate and surrounding concrete work to its original condition. The total cost of the repairs was $29,974.41, including $1,906.67 for administrative overhead.

Following the incident, Captain Keel observed two burrs extending from the edge of the protection angle and fresh scratch marks on the side of the barge which had apparently been made when the rub bar passed up against the burrs on the protection angle. The cause of these burrs is unknown and it is also unknown as to how long these burrs had been present on the angle iron at the corner of the lock wall prior to the accident. The evidence does not establish how far these burrs extended from the plate into the lock chamber, but they were not particularly discernible in the absence of a minute inspection.

The United States brought suit against the M/V C.R. Clements, in rem, Barge CCT-124, in rem, Republic Marine, Inc., as owner of the tow boat, in personam, and ContiCarriers and Terminals, Inc., as owner of the barge, in personam, pursuant to 33 U.S.C. §§ 408 and 412. The United States also brought an action premised upon negligence, but the Government dismissed that cause of action at the commencement of the trial.

Republic Marine, Inc. filed a cross-claim against ContiCarriers for indemnity and contribution, alleging that Barge CCT-124 was unseaworthy and that ContiCarriers breached its warranty of seaworthiness to the tow boat operator. ContiCarriers filed a cross-claim against Republic Marine and brought a third party action against Dravo Corporation, the shipbuilder which constructed Barge CCT-124, alleging that the barge was unseaworthy and its unseawor-thy condition caused the damages sued for by the Government.

This case presents some difficult questions for the Court, because it raises issues involving strict liability, contributory negligence, and causation. While the case law on these matters is somewhat helpful, none of the cases really address the particular situation with which the Court is presented in this case.

The statutes under which the Government brings suit are sections of the Rivers and Harbors Act of 1899, which has been modified slightly since its passage. Section 408 of Title 33 U.S.C. states:

“It shall not be lawful for any person or persons to take possession of or make use of for any purpose, or build upon, alter, deface, destroy, move, injure, obstruct by fastening vessels thereto or otherwise, or in any manner whatever impair the usefulness of any sea wall, bulkhead, jetty, dike, levee, wharf, pier, or other work built by the United States, or any piece of plant, floating or otherwise, used in the construction of such work under the control of the United States, in whole or in part, for the preservation and improvement of any of its navigable waters or to prevent floods, or as boundary marks, tide gauges, surveying stations, buoys, or other established marks, nor remove for ballast or other purposes any stone or other material composing such works.”

The penalties for violating this statute are described in 33 U.S.C. §§ 411 and 412. According to § 411:

“Every person and every corporation that shall violate, or that shall knowingly aid, abet, authorize, or instigate a violation of the provisions of sections 407, 408, and 409 of this Title shall be guilty of a misdemeanor, and on conviction thereof shall be punished by a fine not exceeding $2,500 nor less than $500, or by imprisonment (in the case of a natural person) for not less than 30 days nor more than one year, or by both such fine and imprisonment, in the discretion of the court, one-half of said fine to be paid to the person or persons giving information which shall lead to conviction.”

Section 412 establishes the liability of masters, pilots, and engineers on board vessels which violate provisions of the Rivers and Harbors Act. Section 412 then goes on to state:

“[A]ny boat, vessel, scow, raft, or other craft used or employed in violating any of the provisions of sections 407, 408, and 409 of this title shall be liable for the pecuniary penalties specified in section 411 of this title, and in addition thereto for the amount of the damages done by said boat, vessel, scow, raft, or other craft, which latter sum shall be placed to the credit of the appropriation for the improvement of the harbor or waterway in which the damage occurred, and said boat, vessel, scow, raft, or other craft may be proceeded against summarily by way of libel in any district court of the United States having jurisdiction thereof.”

The case law in this circuit and in others has clearly established that the standard of care imposed by 33 U.S.C. §§ 408 and 412 is strict liability. United States v. Central Soya, Inc., 697 F.2d 165 (7th Cir.1982); United States v. Logan & Craig Charter Service, 676 F.2d 1216 (8th Cir.1982); United States v. Ohio Valley, 510 F.2d 1184 (7th Cir.1975); United States v. Tug Colette Malloy, 507 F.2d 1019 (5th Cir.1975); United States v. M/V Martin, 313 F.2d 851 (7th Cir.1963). According to the Seventh Circuit in Ohio Valley Company, Inc.:

“It has been consistently held that in actions brought by the United States pursuant to 33 U.S.C. §§ 408, 412 there is no ■ requirement that negligence be shown and that a defendant vessel is liable if it has been the cause of a violation of 33 U.S.C. § 408_ [T]he purpose of the combined effect of sections 14 and 16 [of the Rivers and Harbors Act of 1899, 33 U.S.C. §§ 408, 412] is to provide funds for the replacement and maintenance of improvements built by the United States. This purpose is implemented by an absolute liability standard.” 510 F.2d at 1186, 1188.

The area of strict liability law is undergoing constant change and development in today’s world, especially in the area of products liability law. These changes have been prompted by developments in negligence law in general and in the concepts of negligence defenses and comparative fault in particular. The Defendants in this case have asked the Court to reduce the impact of using a strict liability standard by applying comparative fault principles to the facts of this case. However, the Court has not been able to find any cases which have applied the doctrine of comparative fault to the strict liability standard set forth in the statutory cause of action for damage to navigational facilities under 33 U.S.C. §§ 408 and 412. The Court declines to adopt the approach suggested by the Defendants and finds that the above-cited statutes impose a standard of strict liability.

Nevertheless, the Court does reaffirm the principle that even under the strict liability standard of §§ 408 and 412, the Government must prove that the Defendants caused the damage in order to prevail. As explained by the Fifth Circuit in United States v. Tug Colette Malloy, 507 F.2d 1019 (5th Cir.1975):

“[I]f the tug had shown the gateman to be solely at fault in causing the accident a defense would have been established. (Citation omitted). Here the evidence of the tug’s own causal contributions to the accident negates the possibility of a sole cause defense. That concluded, whether the United States was in no way negligent or contributorily negligent is immaterial. Garden-variety contributory negligence is not ordinarily deemed a defense to strict liability, and we do not believe that such fault should be a defense in this strict liability admiralty suit.” 507 F.2d at 1022.

Thus, the Court must reach a conclusion about the cause of the damage to the lock in the context of this strict liability suit in admiralty.

There are a number of cases which bear on this issue and show how courts have interpreted these principles in light of the facts before them. In United States v. The Republic No. 2, 64 F.Supp. 373 (S.D.Tex.1946), the court held that the in rem defendants, Tug Republic No. 2 and three barges, were liable for damages caused to the guidewalls of the flood gates on the intercoastal waterway and the Brazos River in Texas and pecuniary penalties under 33 U.S.C. §§ 408, 411, and 412. The court expressly found that the accidents complained of could not reasonably have been avoided by the ship, but nevertheless found the defendants liable because the statute attached a penalty without regard to willfulness, intent, mistake, or innocence.

United States v. Tug Colette Malloy, 507 F.2d 1019 (5th Cir.1975), involved damage to the flood gates on the Brazos River caused by a collision between the barge towed by the Tug Colette Malloy and the closed flood gates. The Fifth Circuit pointed out that the statutes under which the Government brought suit, 33 U.S.C. §§ 408 and 412, impose a standard of strict liability. Nevertheless, the district court found, and the Fifth Circuit affirmed, that the gateman had failed to open the flood gates when he should have, that the lookout on the bow of the barge did not have an adequate means of communicating with the wheelhouse of the tow boat, and that the Tug Colette Malloy had failed to give sound signals when approaching the flood gate as required by regulation. The Fifth Circuit indicated that these findings were relevant to the issue of the defendant’s claim that the actions of the flood gate employee constituted a sole cause defense.

In discussing the possibility of a sole cause defense, the Fifth Circuit concluded that the tug boat’s failure to comply with regulations regarding sound signals and adequate communication contributed to the collision. Once the court concluded that the tug’s own causal contributions to the accident had negated the possibility of a sole cause defense, the court went on to say that contributory negligence is not ordinarily a defense to strict liability. Therefore, concluded the court, it was immaterial whether the United States was negligent or not. After finding the defendant vessels liable under the statute, the court then refused to require the United States to imdemnify the defendants because “indemnification would undermine the strict liability imposed by the statutes.” 507 F.2d at 1023.

The Court finds this opinion confusing because of what it says and does not say on the issue of causation in a strict liability suit. The Fifth Circuit said that the defendants would have made out a good defense if they had proved that the gateman was the sole cause of the accident. Then the court discussed the tug boat’s failure to ■ comply with sound and communication regulations and concluded that the tug had causally contributed to the collision. The Fifth Circuit pointed out that the proper standard for the case was strict liability and that the Government’s negligence was immaterial, but then the court proceeded to discuss the “causal contributions” of the tug and its crew in a manner that brings to mind the idea of fault. As this Court understands it, fault is not an element of a strict liability suit, so the Court is confused as to why the Fifth Circuit found it necessary to rely upon the district court’s findings that the tug boat had not given proper sound signals and that its crew members were not in proper contact with the wheelhouse. Although the Fifth Circuit speaks in terms of “causal contributions” rather than “fault,” the opinion in Tug Colette Malloy does suggest that the court found for the Government and against the defendants because the Government had established the elements of the defendants’ fault at trial.

The Eighth Circuit handled this matter of causation in a much more straight-forward manner in a case which very closely resembles the present case. In United States v. Logan & Craig Charter Service, 676 F.2d 1216 (8th Cir.1982), the United States sued in rent the M/V Margie Logan and nine barges, and in 'personam Logan & Craig, the owner and operator of the tow boat under 33 U.S.C. §§ 408, 411, and 412 for damage to a lock extension. At the particular lock which was damaged, the Army Corps of Engineers had extended the guidewalls leading to the lock chamber by annexing three barges to the guidewall and anchoring them to the river bottom. The collision occurred when the corner of the lead barge contacted a corner of one of the anchored barges which was not aligned with the adjacent barge and protruded four to six inches into the channel. The district court found that the M/V Margie Logan’s approach was consistent with customary procedures and was accomplished in a prudent and seamanlike manner. It also found that this misalignment condition created an unlawful obstruction to navigation under 33 U.S.C. § 403. The district court entered judgment for the defendants, holding that the Government violated its duty to correct a hazard or warn navigators and that this negligence was the sole proximate cause of the collision.

The Eighth Circuit reversed the lower court’s decision, pointing out that the misalignment could not separately be characterized as a § 403 obstruction because the district court should have considered the lock structure as a whole. The circuit court then stated that the barge extension of the guidewall was a work protected under § 408 and indicated that §§ 408 and 412 impose strict liability and do not require a showing of negligence. The Eighth Circuit then concluded, “[T]he sole issue is causation. The M/V Margie Logan was clearly an active cause of the damage at issue.” 676 F.2d at 1220. The Eighth Circuit held in favor of the Government on the issue of liability and remanded the case to the district court to determine damages.

Similarly, in the present case, the evidence shows that the M/V C.R. Clements approached Lock and Dam Number 21 in a prudent and seamanlike manner and Pilot Keel followed all the orders given by the lockmen. There was nothing negligent about the manner in which he approached and entered the lock chamber with the second cut of barges. However, as the cases point out, the standard for damages and penalties under §§ 408 and 412 is strict liability. Therefore, it is unnecessary for the Court to find negligence in order to find that the M/V C.R. Clements and its barges were an active cause of the collision, as indicated in Logan & Craig Charter Services.

At the same time, because the statute is a strict liability statute, the Court does not have to make an inquiry into whether the Government was negligent in maintaining Lock and Dam Number 21. The court in Tug Colette Malloy indicated that once the court concluded the defendant vessel had causally contributed to the accident, the issue of the United States’ negligence or contributory negligence was immaterial. The Eighth Circuit in Logan & Craig did not even mention the Government’s conduct in misaligning the anchored barges once the court indicated that the tow boat was an active cause in the collision. These decisions lead this Court to conclude that the Defendants cannot escape liability under 33 U.S.C. § 408 and 412 by arguing that the Government was negligent in allowing a burr to exist which extended into a lock chamber from the armor plate. By coming into contact with the armor plate and its burrs, the M/V C.R. Clements and its barges became an active cause of the collision and the resulting damage to the armor plate and surrounding concrete. Even though the burr was a cause of the accident, the ship’s involvement is clear. Something on the side of the barge contacted the burrs on the armor plate, and without this combination of factors the damage to the lock would not have occurred. Imposing liability on the Defendant vessels without regard to fault is consistent with the purposes of the statute as discussed by the Seventh Circuit in United States v. Ohio Valley Company, Inc., 510 F.2d 1184, 1188 (7th Cir.1975). The Court concludes that liability runs in favor of the Government and must now address the issue of which Defendants are liable for what amount of damages.

This case is an admiralty case and involves the interesting admiralty practice of allowing ships themselves to be brought in as in rem defendants in particular types of suits. However, this practice complicates matters for the Court in deciding which Defendants are liable to the Government, because the Government has sued the tow boat and barge in rem and the owners of each of these vessels in personam. This case, then, presents the dual issues of whether the Government has followed the procedures necessary to bring an in rem action against the barge and the tow boat and whether, in addition to the in rem recovery expressly provided in § 412, §§ 408 and 412 allow for in personam recovery against the ship owners as well.

Turning to the first of these issues, the Court finds that it does have in rem jurisdiction over both Defendant vessels, the M/V C.R. Clements and Barge CCT-124. With regard to the M/V C.R. Clements, on June 8, 1983, New York Marine Managers, Inc., on behalf of Republic Marine, Inc., provided the Plaintiff with a letter of undertaking. A letter of undertaking has the same effect as if the vessel had been seized and released pursuant to a bond. Continental Grain Co. v. Federal Barge Lines, Inc., 268 F.2d 240 (5th Cir.1959), aff'd., 364 U.S. 19, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1960). Moreover, the Court’s in rem jurisdiction over the M/V C.R. Clements is not in dispute and has not been challenged by Republic Marine, who, in fact, answered the complaint in person-am and in rem on behalf of M/V C.R. Clements.

The arguments surrounding the in rem jurisdiction over the Barge CCT-124 are not so easily resolved. ContiCarriers, in its proposed findings of fact and conclusions of law, suggests that because the Government never properly served process upon the barge, Barge CCT-124 is not within the jurisdiction of the Court as an in rem Defendant. The pleadings in this ease do indicate that the barge never was seized as required by Rule C, Supplemental Rules for Admiralty and Maritime Claims, nor did ContiCarriers provide the Government with a bond or letter of undertaking. Nevertheless, although ContiCarriers may have had a valid objection to in rem jurisdiction over Barge CCT-124, ContiCarriers has lost the opportunity to avail itself of that defense on behalf of the barge.

The pleadings in the case show that the Government’s complaint was clearly framed as an in personam action against ContiCarriers and an in rem action against Barge CCT-124, which, the Government alleged, was owned by ContiCarriers. Conti-Carriers answered this complaint by denying liability and by denying ownership of Barge CCT-124, even though it admitted that ContiCarriers and the barge would be within the district during the pendency of the litigation. Later, ContiCarriers did respond to Republic Marine’s cross-claim as an in personam Defendant and as the claimant to Barge CCT-124, in rem. Finally, the parties filed a stipulation prior to trial that at the time of the accident, Barge CCT-124 was bare-boat chartered to Conti-Carriers by Republic National Leasing Corporation, and ContiCarriers became owners for purposes of this litigation. At no time prior to filing its proposed findings of fact and conclusions of law did ContiCarriers ever object to the in rem jurisdiction over Barge CCT-124 or bring a motion to dismiss for lack of jurisdiction over the Defendant barge.

The Court concludes that these facts are sufficient to give the Court in rem jurisdiction over Barge CCT-124 even though the barge was never actually seized pursuant to service of summons and complaint. The Fifth Circuit in Cactus Pipe & Supply v. M/V Montmarte, 756 F.2d 1103 (5th Cir.1985), indicated that a court could have in rem jurisdiction over a defendant vessel even without in rem service of process. The court began its analysis by indicating that a party can waive in personam jurisdiction by failing to raise it in a motion under Rule 12 of the Federal Rules of Civil Procedure or not including it in a responsive pleading. The court also pointed out that generally, an appearance in an action involved some presentation or submission to the court. Id. at 1107-08. The court held that because the vessel’s owner had filed a claim of ownership without raising any objection to jurisdiction, the in rem jurisdiction of the district court was perfected. Id. at 1110.

Although the situation before the court in Cactus Pipe was somewhat different than that of the present case, this Court does not believe that those differences are enough to require this Court to reach a contrary conclusion. Even though Conti-Carriers never filed a formal claim of ownership which stated the owner’s interest in the vessel and demanded restitution and a right to defend it (as did the vessel owner in Cactus Pipe), ContiCarriers’ actions in this litigation were such that it is not unfair for the Court to treat ContiCarriers as having asserted its interest in the vessel and its right to defend it. Moreover, during the entire pretrial proceedings and even during the trial itself, ContiCarriers never objected to the Court’s jurisdiction or indicated that it was not representing or defending the in rem Defendant barge. Because these actions of ContiCarriers are inconsistent with ContiCarriers’ later objection to in rem jurisdiction, the Court finds that it does have in rem jurisdiction over Barge CCT-124.

Turning to the question of the Government’s in personam actions over the owners of the in rem Defendants, the Court finds itself facing unclear statutes and a confused state of the law. Contrary to the assertions of the parties, it is by no means clear to the Court that an in person-am action exists in favor of the government against owners of vessels which cause damage to government works under 33 U.S.C. § 408. The cases cited by the parties on this issue are not particularly enlightening because these cases do not point out which Defendant or Defendants the Court is holding liable under the strict liability standard of 33 U.S.C. §§ 408 and 412. In fact, in one of these cases, United States v. Federal Barge Lines, 573 F.2d 993, 998 (8th Cir.1978), the court went on to expressly state that it was not addressing the question of whether in personam relief was available under § 408 in addition to the in rem remedy expressly provided by § 412. Likewise, in United States v. Ohio Valley Company, Inc., 510 F.2d 1184 (7th Cir.1985), the court disposed of the case on the basis of count II, which was a claim asserted against the defendant vessel under §§ 408 and 412 and did not name the vessel’s owner as a defendant.

The difficulty this Court has.in determining whether an in personam action lies against the owner of a vessel involved in a violation of § 408 results from the wording of the provisions of the Rivers and Harbors Act of 1899. Section 408 makes it unlawful for any person to injure any work of the United States for use in navigation, § 411 imposes penalties upon persons and corporations which violate or knowingly aid a violation of § 408, and § 412 imposes liability upon vessels used or employed in violating § 408 and sets a standard of liability for masters and pilots on board such vessels. Nowhere in the statute is the in personam liability of the owner of such a vessel addressed if the owner were not on board or did not personally do any of the acts prohibited in § 408.

The Seventh Circuit gave some indication of how it interprets these statutes in the case of United States v. Ohio Valley Company, Inc., 510 F.2d 1184 (7th Cir.1975). In discussing whether the Limited Liability Act of 1851, 46 U.S.C. § 183(a), applies to suits brought by the United States pursuant to 33 U.S.C. §§ 408 and 412, the court said:

“Sections 14 and 16 [of the Rivers and Harbors Act of 1899, 33 U.S.C. §§ 408 and 412] speak in terms of a vessel being liable for the damages caused to a United States work. Thus, the United States must proceed in rem under section 14 and the relevant part of section 16. Indeed, the government at oral argument admitted that there could be no in per-sonam liability under its Count II. In an in rem proceeding where amounts claimed in excess of the value of the res seized cannot be levied upon, the judgment for all practical purposes will always be limited to the value of the res which will generally be the value of the ship plus cargo. The in rem liability of section 16 for an action brought pursuant to sections 14 and 16 is not amenable to section 183(a) limitation which refers only to limiting the in personam liability of an owner of a vessel.” (Footnotes omitted). Id. at 1188-89.

The Supreme Court’s decision in Wyandotte Co. v. United States, 389 U.S. 191, 88 S.Ct. 379, 19 L.Ed.2d 407 (1967), also puts forth an analysis useful in the present situation, even if the facts of the two cases are different. In Wyandotte, the Supreme Court held that the United States may assert in personam rights against persons responsible for the negligent sinking of a vessel in order to recover monies expended by the Government for removal of those sunken ships. The ship owners, Wyan-dotte, sought to limit their liability to the value of the ship and its cargo, which the Government had recovered and sold following Wyandotte’s abandonment of the wreck. The controlling statute in Wyandotte was 33 U.S.C. § 409, which prohibits the voluntary or careless sinking of vessels and imposes certain duties upon the owners to mark and remove a vessel whenever a vessel is wrecked and sunk in a navigable channel. The Supreme Court read this statute, along with 33 U.S.C. §§ 414 and 415, as imposing a limit upon the liability of a vessel owner to the value of his ship and cargo only when such owner has abandoned his sunken vessel and was not negligent in its sinking. In instances in which the owner is negligent, held the Court, the government may proceed in personam against the owner for injunctive relief and for removal costs in excess of the value of the sunken vessel.

Although the present case involves different sections of the Rivers and Harbors Act of 1899, the decision in Wyandotte suggests the analysis to be used by this Court in interpreting this statute. In Wyandotte, the Supreme Court held that ship owners who negligently sink a vessel are liable in personam for removal costs, thereby acknowledging that owners would be limited in their liability to the extent of the value of their ship if the ship were sunk non-negligently. Similarly, § 412 authorizes the Government to proceed in rem against a vessel involved in violating § 408, and the standard in such an action is strict liability. In light of the implications of Wyandotte and in the face of a statute which imposes liability without fault or negligence, the Court is reluctant to hold ship owners liable for damages beyond the value of their ships under 33 U.S.C. §§ 408 and 412. Therefore, the Court agrees with the point conceded by the Government in Ohio Valley Company and holds that no in personam cause of action lies against ContiCarriers and Marine Republic as owners of the in rem Defendant vessels, Barge CCT-124 and the M/V C.R. Clements.

As for the amount of damages for which the in rem Defendants are liable, the Court holds that the Government has proven it is entitled to recover damages in the amount of $29,974.41. This award includes an amount for overhead, which is an authorized recovery expense when the government agency does its own repair work. United States v. Peavey Barge Line, 748 F.2d 395, 399-400 (7th Cir.1984). The damage award also reflects additional costs which resulted from the Government’s delay in repairing the lockwall. The Court concludes that these charges are reasonable because there is no indication that the Government’s decision when to repair the lock, in view of the volume of traffic on the river, was arbitrary or capricious. The Government is also entitled to pre-judgment interest from the date of the collision in the amount of 11%.

The Defendants have argued to the Court that the damages claimed by the Government are unreasonable in that the repair work actually improved the condition of the lock wall rather than just restoring it to its pre-collision condition. The Court concludes that the evidence does not permit any type of reasoned estimate as to the condition of the lock wall prior to the collision which might have been caused by wá-ter seepage. Therefore, the Court declines to speculate on this matter and holds that the Government may recover the entire amount of damages it is seeking.

The Court dismisses the cross-claims and third party complaint on the merits because the evidence shows that neither the Barge CCT-124 nor the M/V C.R. Clements was defective or unseaworthy.

Finally, the Court has discretion under 33 U.S.C. §§ 411 and 412 to set pecuniary penalties against the Defendant vessels in an amount between $500 and $2,500. In assessing this penalty, the Court points out that neither vessel was operated negligently or improperly, and there was no way the Defendants could have avoided the accident short of avoiding traveling through the lock. The Court assesses a penalty against each Defendant vessel in the amount of $500.

The Court does not like the result reached in this case, but it believes it has no choice but to hold the Defendant vessels liable for damages. The Court understands the purpose and public interest involved in a statute of this type. Nevertheless, holding a Defendant strictly liable for damages when, but for the protrusion of the burrs into the lock chamber, the accident would not have happened, results in a manifest injustice. The Court, however, is bound by the law as announced by the Seventh Circuit, and that law makes it clear that the standard of liability for defendant vessels under 33 U.S.C. §§ 408 and 412 is strict liability and fault or negligence is immaterial under this standard.

The Court orders that the in rem Defendants, the M/V C.R. Clements and the Barge CCT-124, are jointly and severally liable to the United States for damages in the amount of $29,974.41 plus interest in the amount of 11%. The Court further orders the Defendants to pay a penalty in the amount of $500 each.

      . A dispute exists in this case as to the condition of the edge of the barge’s rub plate at the time of the collision. One of the lockmen testified that the edge of the rub plate was a straight edge, not filled in. Captain Keel, in his deposition, however, testified that he had investigated the rub plate at the time of the accident and that its edge was beveled (filled in to make an angled edge). The Defendant's expert testified that when he inspected the barge prior to trial, almost six years after the accident, the edges around the rub plates were filled in and ground down and it appeared from the quality of the weld that the rub plates were in the same condition they would have been in when the barge was manufactured.
      There is no other evidence to support the suggestion that the rub bar had a sharp corner or defective edge sticking out at the time of the accident. The Court concludes that the preponderance of the evidence indicates that the rub plates on the Barge CCT-124 had beveled edges at the time of the collision with the armor plate on the lock wall. The Court also finds that the Barge and its rub plate were not defective and that, in light of the lockman’s testimony that barges with both beveled (filled in) and straight (non-beveled) rub plates pass through the lock without incident, the issue of whether the Barge was defective or not was not determined by the type of edges it has on its rub plates.


source: Caselaw Access Project

author: LEISURE, District Judge:

license: Public Domain

text:
    PAST PLUTO PRODUCTIONS CORP., Plaintiff, v. David A. DANA and Dana International, Defendants.
    No. 85 Civ. 5400 (PKL).
    United States District Court, S.D. New York.
    Feb. 10, 1986.

      Mandeville & Schweitzer, New York City, Michael A. Cornman, and Andrew S. Langsam, of counsel, for plaintiff.
    Richard E. Bennett, New York City, for defendants.
   LEISURE, District Judge:

As the nation prepares to celebrate both the centennial and restoration of the Statue of Liberty, it is hardly surprising that numerous entrepreneurs are seeking to profit from the manufacture and sale of Statue of Liberty memorabilia. Many of these items may be fairly characterized as novelty items, inexpensively made and inexpensively sold. The current dispute arises because one such entrepreneur secured a copyright for the novelty item it had created — a flat foam hat — and now seeks to enjoin another entrepreneur from making and selling its own Statue of Liberty foam hat. This case is before me as an action for injunctive relief and damages for alleged copyright infringement. The Court has subject matter jurisdiction under 28 U.S.C. § 1338(a).

Plaintiff seeks both a preliminary and permanent injunction. During the hearing on plaintiffs application for a preliminary injunction, the parties agreed and the Court ordered that the hearing be consolidated with a trial on the merits, pursuant to Fed.R.Civ.P. 65(a)(2). See Abraham Zion Corp. v. Lebow, 761 F.2d 93, 100-02 (2d Cir.1985).

For the reasons set forth below, in findings of fact and conclusions of law made pursuant to Fed.R.Civ.P. 52(a), the Court finds for the defendant and orders the complaint dismissed.

FINDINGS OF FACT

1. Plaintiff Past Pluto • Productions Corp. (“Past Pluto”) is a New York corporation in the business of selling novelty hats shaped to resemble the crown of the Statue of Liberty. Past Pluto is the employer for hire of Elizabeth Tyre (“Tyre”), the designer of the “Crown of Liberty,” the hat sold by Past Pluto.

2. Defendant David A. Dana (“Dana”) is an individual doing business in the State of New York as the defendant Dana International. In the past, Dana has sold his own line of glassware items through Dana International. At the time of defendants’ alleged infringement, however, the business efforts of Dana and Dana International were devoted primarily to the manufacture and sale of Dana’s “Liberty Lid,” a foam novelty hat shaped to resemble the crown of the Statue of Liberty.

3. Plaintiff’s Crown of Liberty is a soft planar sculpture, approximately three-eighths of an inch thick, made of plastic foam. A hole cut in the foam permits the purchaser to wear the Crown of Liberty as a hat. Seven identical, evenly spaced foam spikes radiate from the hat’s arcuate perimeter. Under the spikes, the hat is decorated with a silk-screen design — a series of solid window-like silhouettes with the words “STATUE OF LIBERTY 1886-1986” appearing above the windows. A copyright notice, “© 1984 Past Pluto Productions N.Y.C. PAT PEND,” is silk-screened on the base of the hat.

4. Plaintiff’s Crown of Liberty was inspired by and derived from the crown of the actual Statue of Liberty. As is well known, the Statue of Liberty is a memorial to independence given by France to Amer-ica. The actual statue, including its pedestal, rises more than 300 feet above New York Harbor. Completed in Paris in 1884 by the sculptor Frederic Auguste Bartholdi, it was unveiled in America in 1886. In 1986, the year of the statue’s centennial, public interest in this great monument has been revived, heightened in no small part by a nation-wide fundraising drive devoted to the statue’s restoration.

5. The crown of the Statue of Liberty is a three-dimensional, copper-coated, iron framework sculpture. Large vertical windows are disposed in the crown. Above the windows seven spikes, non-uniform in size and shape, radiate from the crown.

6. Plaintiff's mass-produced Crown of Liberty is intended to bear a noticeable, albeit superficial resemblance to the crown of the Statue of Liberty. For example, plaintiff’s hat is green, resembling the weathered copper surface of the actual statue. The silk-screen design on plaintiff's hat is a flat pictorial representation of the windows on the crown of the Statue of Liberty. In addition, when worn on the head, the front of the Crown of Liberty flips up, creating an effect somewhat similar to that created by the raised spikes of the Statue of Liberty.

7. On December 31, 1984, plaintiff registered its Crown of Liberty design with the United States Copyright Office and received Registration Number VA-175-451. The copyright registration identified plaintiff’s work as a “soft sculpture.” On its registration form, however, plaintiff made no mention of the fact that its “soft sculpture” was based on the Statue of Liberty. Specifically, plaintiff did not enter any information on section 6 of the form, which is supposed to be completed if the work being registered is a derivative work.

8. In or prior to June of 1985, plaintiff sold defendant Dana 500 Crowns of Liberty on consignment. Dana sold approximately 150 of those hats, for which he paid plaintiff, and returned the unsold balance. Subsequent to that consignment, Dana entered into negotiations with plaintiff for the purchase of 5,000 of plaintiff's hats for resale. This transaction was never consummated, however, because Dana balked at Tyre’s attempt to raise her sales price 2$ over the figure (70<p per hat) that she had originally mentioned.

9. Dana responded to the dissolution of his brief business relationship with Tyre by deciding to make his own version of a Statue of Liberty foam hat. Dana then proceeded to draw a rough sketch of the hat he intended to make — a seven-spiked crown with a head size of six inches. At trial, Dana testified under oath that this sketch was based on his own independent research on the Statue of Liberty. Specifically, Dana testified that he had researched his subject in the public library, reading several books on the Statue and some biographical data on the sculptor Bartholdi. Dana also testified that he had studied some post-card photos of the Statue. See Transcript of July 30, 1985 Hearing at 16. Although the Court does not question Dana’s veracity regarding what he read or studied, any suggestion that Dana’s rudimentary sketch was crafted without any reference to his recollection of plaintiff’s hat is rejected as not credible.

10. Having finished his sketch, Dana contacted foammakers throughout the New York City area to get price quotes and to see if it was economically feasible to start making and selling foam hats. Dana met with Richard Slone (“Slone”), of Urethane Products, Inc., who was in fact already making Crown of Liberty hats for plaintiff. Subsequently, Dana paid Slone $225 to make a die corresponding to Dana’s sketch which could be used for the future production of foam hats. Slone also agreed to supply Dana with urethane foam and make the hats. Eventually, however, Slone told Dana that he would only supply Dana with yellow or gray foam, since he was already making a green hat for plaintiff. Dana refused, telling Slone that his customers would expect and want Dana’s hat to be green, the same color as the oxidized copper surface of the actual Statue of Liberty.

11. Taking the die he had bought from Slone, Dana sought foam from other suppliers, eventually reaching an agreement with Barney Weiss (“Weiss”) of Durafoam Company. At the suggestion of Weiss, Dana hired M. Daniel Leo (“Leo”), a professional artist and silkscreener, to do the artwork for the crown’s design. According to Leo’s sworn affidavit, which this Court finds credible in all material respects, he was asked to make a drawing based on the crown of the Statue of Liberty. Leo was told that his artwork would be screened on a novelty foam hat, and was in fact shown a blank cutout of a crown made from Dana’s die. At no point was Leo shown Past Pluto’s Crown of Liberty. Rather, he based his own artwork on a photocopy from a magazine advertisement which contained an artist’s rendering of the Statue of Liberty. Then, using Dana’s foam cutout, Leo drew a design not entirely dissimilar to plaintiff’s hat, which Leo had never seen. Beneath the spikes, Leo drew dark window-like rectangles in an arced formation, rounding off the tops of the windows to create a domed effect. The windows at either end of the crown were given bulged domes. In general, Leo applied basic techniques of perspective to his drawing; for example, he drew a line above the tops of the windows in order “to show where the parts of the crown begin and to give the illusion of depth to the windows.” Affidavit of Daniel Leo in Opposition to Motion for Preliminary Injunction If 7 at 2 (“Leo Affidavit”).

12. Dana specifically directed Leo to include the word “LIBERTY” and the dates “1886” and “1986,” respectively, on the artwork. Leo complied with Dana’s request by placing “1886 LIBERTY 1986” in a curved line beneath the windows, surrounded in either side by three stars.

13. Leo’s artwork has been adopted by Dana and has appeared on all versions of Dana’s Liberty Lid. Dana began selling his Liberty Lids in late June or early July of 1985. Dana has made two versions of the Liberty Lid. The first version, which Dana discontinued after selling about 1200 hats, is circular on the bottom (like plaintiff’s hat) and has its seven spikes spread out in a formation that is similar, though not identical, to plaintiff’s hat. In contrast, the second version of Dana’s has a flattened bottom (apparently to make the hat easier to wear) and its spikes are shifted upward.

14. On July 18,1985, the U.S. Copyright Office issued a certificate of copyright registration for Dana’s Liberty Lid. Dana received Registration Number VA-193-820. In his registration form, Dana described the nature of his work as a “silkscreen soft sculpture.” Dana also completed section 6(a) of the form, which asks the author to identify any preexisting works, as follows: “Based on head of Statue of Liberty, sculpted by Auguste Bartholdi, a citizen of France, in 1886.”

15. Comparing plaintiff’s Crown of Liberty with defendants’ Liberty Lid, the Court finds the following similarities:

—Both hats are approximately the same as to height and width. The second version of Dana’s hat, however, has shorter spikes, making plaintiff’s hat slightly higher and wider than Dana’s second version.
—Both hats are constructed from a flat sheet of foam of approximately the same thickness. (The foam used in both hats is similar in texture, although one of Dana’s hats that was introduced into evidence was made of softer, spongier foam).
—Both hats have seven foam spikes.
—In both hats, a hole is cut out in the foam to allow the purchaser to wear the item as a hat.
—The front of both hats flip up.
—Both hats are green. (Dana has apparently produced some blue hats and some hats that are blue and green. At least three-fourths of his hats are green, however, and it is clear that, unless he is enjoined, Dana will continue to produce mostly green Liberty Lids).
—There is a silkscreen design on the surface of both hats.
—Both hats include the centennial dates “1886” and “1986” in their respective silkscreen designs.
—Both hats have blackened rectangular windows with rounded tops silkscreened beneath the spikes.
—Both hats have a black arcuate line silkscreened above the windows.
—The spikes on the first version of Dana’s hat are splayed in a manner that is nearly, though not exactly, identical to the arrangement of the spikes on plaintiff’s hat.
—The bottom of the first version of Dana’s hat is rounded, as is the bottom of plaintiff’s hat.
16. Comparing plaintiff’s Crown of Liberty with defendants’ Liberty Lid, the Court finds the following differences:
—Plaintiff’s hat has 21 windows. Defendants’ hat has 15 windows.
—The tops of plaintiff’s windows are evenly rounded. On defendants’ hat, the windows on the right and left sides have bulging domes.
—On plaintiffs hat, the phrase “STATUE OF LIBERTY 1886-1986” is placed above the windows, directly below the hat’s three uppermost spikes. On defendants’ hats, the phrase “1886 LIBERTY 1986,” surrounded on either side by three stars, is placed below the windows. There are no stars on plaintiff’s hat.
—Past Pluto’s window design is surrounded by a silkscreened line, while the line on Dana’s design borders only the tops of the windows.
—In the second version of defendants’ hat, the spikes are shortened and shifted upward. Thus, when the second version of defendants’ hat is placed on top of plaintiff’s hat, the spikes of one hat do not align with the spikes of the other.
—The second version of defendants’ hat, unlike plaintiff’s hat, has a flat bottom curved slightly inward.

CONCLUSIONS OF LAW

1. The two elements necessary to a plaintiff’s case in an infringement action are: ownership of a copyright by the plaintiff and copying by the defendant. 8 Nimmer on Copyright § 13.01 at 13-3 (1985); see Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir.1985). As a threshold matter, plaintiff must establish the existence and validity of its copyright, since in the absence of copyright even original creations are in the public domain and may be freely copied. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980) (citations omitted).

2. Where, as here, plaintiff timely obtains a certificate of registration from the U.S. Copyright Office, such certificate “constitute[s] prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c). A certificate of registration, however, does not create an irrebuttable presumption of copyright validity. Durham Industries, 630 F.2d at 908. Rather, the certificate’s presence shifts the burden to defendant to disprove validity. See Hasbro Bradley, Inc. v. Sparkle Toys, Inc., at 192. Thus, validity should not be assumed where other evidence casts doubt upon the integrity of the copyright. See Durham Industries, 630 F.2d at 908.

3. It is fundamental that copyright protection extends only to “original works of authorship.” 17 U.S.C. § 102(a); see 1 Nimmer on Copyright § 2.01 at 2-5 (1985). Although an ordinary mass-produced item may be entitled to copyright protection, such an item, in order to be protected, must nonetheless “be original, that is, the author’s tangible expression of his ideas.” Mazer v. Stein, 347 U.S. 201, 214, 74 S.Ct. 460, 468, 98 L.Ed. 630 (1954); see L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 492 (2d Cir.) (en banc), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976).

4. Plaintiffs Crown of Liberty, based on a famous statue indisputably in the public domain, is a classic example of a derivative work. See 17 U.S.C. § 101. Although derivative works may be copyrighted, see 17 U.S.C. § 103(a), the copyright protection extends only to the original contributions of the derivative work’s author, see 17 U.S.C. § 103(b). The new copyright in no way embraces or protects the underlying, pre-existing work. See id.

5. If a court, upon examining a derivative work, cannot discern any original contribution, it follows that the derivative work cannot be the subject of a valid copyright. The Second Circuit has consistently held that derivative works, in order to be copyrightable, must “ ‘contain some substantial, not merely trivial originality.’ ” L. Batlin & Son, 536 F.2d at 490 (quoting Chamberlin v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir.1945); accord Sherry Mfg. Co. v. Towel King of Florida, Inc., 753 F.2d 1565, 1568 (11th Cir.1985). See Durham Industries, 630 F.2d at 909 (“to support a copyright the original aspects of a derivative work must be more than trivial.”).

6. If non-trivial originality can be found in plaintiff’s Crown of Liberty, it must be found in the hat’s design and not in the hat itself. Elizabeth Tyre may well have been the first person clever enough to think of making flat foam hats based on the Statue of Liberty. But neither Tyre, Past Pluto, nor anyone else can copyright Statue of Liberty foam hats. This is so for two reasons: First, it is axiomatic that copyright protection is given only to the particular expression of an idea and never to the idea itself. Mazer v. Stein, 347 U.S. at 217, 74 S.Ct. at 470. Second, a copyright claimant’s production of a work of art in a different medium cannot by itself constitute the originality required for copyright protection. L. Batlin & Son, 536 F.2d at 491 (citing Nimmer on Copyright). This rule is justified because no one ban claim to have independently evolved any particular medium. Id. (citing Nimmer on Copyright); see Atari, Inc. v. Amusement World, Inc., 547 F.Supp. 222, 226 (D.Md.1981).

7. In short, the quantum of originality necessary to establish the copyrightability of plaintiff’s hat must be found, if anywhere, in the hat’s design. Once this Court’s inquiry has been so defined, it also becomes necessary to identify those aspects of the Crown of Liberty’s design that are so clearly within the public domain that they cannot reasonably be considered original. First, the seven spikes of plaintiff’s crown correspond in number to the seven spikes of the crown of the Statue of Liberty. There is nothing at all original, or copyrightable, about seven spikes on a liberty crown. Plaintiff attempts to lay some claim to originality by pointing out that its spikes are uniform in shape and size, unlike the non-uniform spikes of the Statue of Liberty. This Court declines, however, to find artistic originality in a design feature composed of elemental symmetry and prompted most probably by the promise of convenience in manufacture. See L. Batlin & Son, 536 F.2d at 489 (variations found in a derivative work that result from the desire to make the work “as simply as possible for the purposes of manufacture” are only trivial and do not amount to substantial originality). Second, the phrase “Statue of Liberty 1886-1986” is a simple reference to the Statue’s centennial adapted from historical data that is beyond peradventure within the public domain. See Alexander v. Haley, 460 F.Supp. 40, 45 (S.D.N.Y.1978). Third, there is nothing protectible about plaintiff’s use of green foam, especially since defendant’s own use of green is attributable solely to the fact that his hat is based on a green statue. See Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 500 (2d Cir.1982) (manufacturer cannot copyright common characteristics of snowmen). Finally, although it could be argued that plaintiff’s disposition of the hole for the purchaser’s head is in some sense an original feature of the hat’s design, it would probably be more accurate to regard this “purely functional, non-artistic” aspect of plaintiff’s hat as beyond the scope of copyright protection. See Durham Industries, 630 F.2d at 909 n. 3.

8. Accordingly, Past Pluto’s argument that its hat is copyrightable is ultimately reduced to the basic contention that the hat’s silhouette window design is sufficiently original to afford plaintiff’s hat at least some measure of copyright protection. For the reasons set forth below, however, this Court declines to find that this design or any of the hat’s other features amount to substantial non-trivial originality deserving of protection under the federal copyright laws.

9. The Second Circuit has evaluated the originality of derivative works in two well-known decisions. In L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.) (en banc), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976), the Court upheld the trial court’s finding that the differences between appellants’ copyrighted plastic Uncle Sam bank and a cast iron Uncle Sam bank in the public domain were insufficiently original to support a copyright. See id. at 492. In so holding, the Court noted that appellants’ bank was extremely similar to the cast iron bank, save for differences in size and material. See id. at 489. The Court acknowledged certain differences in the prior and derivative work, such as the shape of the bank bag and the leaves in the eagle’s talons, but derided such distinctions as “minor.” See id. The Court then explained why the purpose of the copyright laws would be ill-served by granting protection to appellants’ work:

Absent a genuine difference between the underlying work of art and the copy of it for which protection is sought, the public interest in promoting progress in the arts ... could hardly be served. To extend copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work.

Id. at 492.

In Durham Industries, Inc. v. Tomy Corp., 630 F.2d at 905 (2d Cir.1980), the Court considered the copyrightability of derivative works of a licensee based on the licensor’s copyrighted works. Specifically, Tomy Corporation (“Tomy”), a toy manufacturer with a license to market certain copyrighted cartoon characters of Walt Disney Productions, claimed to hold valid copyrights on three wind-up plastic figures (each about three inches tall and capable of locomotion) that were instantly recognizable as the Disney characters Mickey Mouse, Donald Duck and Pluto Dog. Id. at 908. The validity of Tomy’s copyright was challenged by another Disney licensee, Durham Industries, Inc. (“Durham”), which had been manufacturing and distributing wind-up toys which Durham conceded were modelled after Tomy’s Disney figures. See id. Nonetheless, the Court declined to find the Tomy figures sufficiently original to be deserving of copyright protection. See id. at 911. Relying on its prior decision in L. Batlin & Son, the Court in Durham Industries noted that “the mere reproduction of the Disney characters in plastic, even though the adaptation of the preexisting works to this medium undoubtedly involved some degree of manufacturing skill, does not constitute originality as this Court has defined the term.” Id. at 910.

10. The Second Circuit's decisions in L. Batlin & Son and Durham Industries strongly support the conclusion that plaintiff’s Crown of Liberty hat is not entitled to copyright protection. As I have already noted, the mere transposition of the Statue of Liberty into the infinitely more mundane medium of flat foam does not constitute the originality necessary to sustain a claim of copyright; at best, it is evidence of manufacturing skill, see Durham Industries, 630 F.2d at 910. See also L. Batlin & Son, 536 F.2d at 491 (requirement of originality must be satisfied by the demonstration of “true artistic skill,” rather than the mere demonstration of “physical skill” or “special training”).

11. It is also my finding that plaintiff’s silhouette window design is only a “minuscule variation,” see Durham Industries, 630 F.2d at 910; L. Batlin & Son, 536 F.2d at 492, demonstrating no more than “trivial” originality, see id. at 490. Anyone making a flat foam hat of the Statue of Liberty is bound to include windows in the hat’s design. When viewed at a distance, the windows of the Statue of Liberty appear as darkened oblong rectangles with slightly rounded tops. Plaintiff’s hat merely mirrors that appearance in a different medium. The sworn affidavit of defendant’s artist supports the finding that the application of conventional techniques such as elementary perspective drawing could easily lead anyone designing a flat foam hat based on the Statue of Liberty to use a dark-window design. See Leo Affidavit 119 at 3. In short, the dark-window design is evidence of mechanical skill rather than artistic skill, and mechanical skill cannot be equated with originality for the purposes of the copyright laws, see supra, Conclusion of Law ¶ 10.

12. Accordingly, I find that plaintiff’s Crown of Liberty hat lacks sufficient originality to be the subject of a valid copyright. For that reason alone, Past Pluto has failed to establish a prima facie case of infringement, see Sherry Mfg. Co. v. Towel King, 753 F.2d at 1569, and its application for injunctive relief must be denied.

13. Although I need go no further in my analysis before dismissing this case, the evidence before me permits me to reach certain conclusions regarding plaintiff’s proof of copying. For even if Past Pluto were able to establish ownership of a valid copyright, it would also have to prove actual copying by defendants in order to prevail on its infringement claim. See Warner Bros. v. American Broadcasting Cos., 654 F.2d 204, 207 (2d Cir.1981). In the absence of direct proof, copying may be inferred where a plaintiff establishes that the defendant had access to the copyrighted work and that substantial similarities exist as to protectible material in the two works. Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.1986).

14. In the instant case, because it is undisputed that Dana had access to plaintiff’s Crown of Liberty, proof of copying may be equated with proof of substantial similarity. Under the “ordinary observer” test adopted by the Second Circuit, two works are substantially similar if “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir.1966); accord, e.g., Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir.1977). In the context of the current dispute, however, this Court should consider the “ordinary observer” test, in light of the limited modes of expression which are available, as a practical matter, to makers of flat foam hats based on the Statue of Liberty. As Professor Nimmer has noted, “similarity of expression ... which necessarily results from the fact that the common idea is only capable of expression in more or less stereotyped form will preclude a finding of actual similarity. ” 3 Nimmer on Copyright § 13.03[A] at 13-32-33 (1985) (emphasis added); see Durham Industries, 630 F.2d at 916; Reyher v. Children’s Television Workshop, 533 F.2d 87, 91 (2d Cir.), cert. denied, 429 U.S. 980, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976).

15. Thus, any similarities between plaintiff’s and defendants’ hats are most accurately viewed as inevitable congruences rather than indicia of copying. Cf. Mattel, Inc. v. Azrak-Hamway Int’l, Inc., 724 F.2d 357, 360 (2d Cir.1983) (per curiam). To the extent that an idea and its expression are indistinguishable, a copyright can protect only against identical copying. Atari, Inc. v. North Am. Philips Consumer Electronics Corp., 672 F.2d 607, 616 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982). In applying this principle, known as “idea-expression unity,” Atari, Inc., supra, 672 F.2d at 616, the Ninth Circuit has noted that an idea and its expression are more likely to coincide when an inexpensive manufacturing process is used. See Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157, 1168 (9th Cir.1977). That observation speaks volumes about the difficulty a novelty foam hat maker such as Past Pluto will have in sustaining a claim for infringement.

16. In the instant case, plaintiff cannot credibly assert that Dana’s hat is an identical copy of Past Pluto’s hat. Indeed, there are several identifiable differences in the two hats. See supra, Finding of Fact ¶ 16. Although these differences are not of great magnitude, they are nonetheless significant, given the limited variations in design available to plaintiff, see supra, Conclusion of Law ¶ 14. In addition, where, as here, plaintiff’s work is itself derived from a design in the public domain, the showing of imitation should be stronger, see Millworth Converting Corp. v. Slifka, 276 F.2d 443, 445 (2d Cir.1960), and even small variations may protect a subsequent designer from infringement, see Concord Fabrics, Inc. v. Generation Mills, Inc., 328 F.Supp. 1030, 1033 (S.D.N.Y.1971). See also Comment, Copyright Protection for Mass-Produced Commercial Products: A Review of the Developments Following Mazer v. Stein, 38 U.Chi.L.Rev. 807, 816-17 (1971). Finally, the distinct aspects of Dana’s design should not be discounted merely because of speculation that he deliberately altered plaintiff’s design just enough to avoid a finding of substantial similarity. To the contrary, the Second Circuit has clearly indicated that such intentional alteration, if it leads to changes in a work sufficient to eliminate any substantial similarity with a prior copyrighted work, is a legitimate means of avoiding infringement. See Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d at 501 (citing Nimmer on Copyright); Warner Bros. v. American Broadcasting Cos., 654 F.2d at 211 (same).

17. Based on the foregoing analysis, see supra, Conclusions of Law 111113-16, I find that Dana’s Liberty Lid cannot be regarded as substantially similar to of Past Pluto’s Crown of Liberty. Since there is no substantial similarity, there can be no copying, notwithstanding Dana’s admitted access to plaintiff’s hat. Of course, even if plaintiff had presented incontrovertible proof of copying, my prior ruling that Past Pluto does not hold a valid copyright in its Crown of Liberty would preclude plaintiff from prevailing on its claim for infringement. See Towle Mfg. Co. v. Godinger Silver Art Co., Ltd., 612 F.Supp. 986, 992 (S.D.N.Y.1985).

18. Because plaintiff has failed to prove infringement of a valid copyright, there is no reason for an injunction to issue, and this action must be dismissed. On the surface, this conclusion may appear unjust, if only because some of the evidence in this case creates the inference that Dana may have exploited his brief business relationship with Tyre. If that characterization of Dana’s conduct is fair, however, it only means that plaintiff might have asserted a claim based on the common law tort of misappropriation, which generally protects against a defendant’s competing use of a valuable product or idea created by the plaintiff through investment of time, effort, money and expertise. See Standard & Poor’s Corp. v. Commodity Exch., Inc., 683 F.2d 704, 710 (2d Cir.1982); Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F.Supp. 1523, 1534 (S.D.N.Y.1985). If plaintiff had been able to sustain such a claim, however, it would only have been because of proof that Dana stole Tyre’s idea. The very nature of such a claim demonstrates why plaintiff’s infringement claim is fatally flawed, since copyright law protects only the expression of an idea, never the idea itself. E.g., Reyher v. Children’s Television Workshop, 533 F.2d at 90 (citing Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954)).

19. The law of copyright is designed in part to reward individual ingenuity, see id., and to serve the public interest in promoting progress in the arts, see L. Batlin & Son, 536 F.2d at 492. But these laudable goals are hardly served by extending the protection of copyright to works of insufficient originality, such as Past Pluto’s Crown of Liberty. See id. Indeed, to extend copyrightability to such works simply places “a weapon for harassment in the hands of [those] intent on appropriating and monopolizing public domain work.” Id; see Gracen v. Bradford Exchange, 698 F.2d 300, 305 (7th Cir.1983) (if originality is found too easily in derivative works, “it would paradoxically inhibit rather than promote the creation of such works by giving the first creator a considerable power to interfere with the creation of subsequent derivative works from the same underlying work.”).

CONCLUSION

Accordingly, for the reasons stated herein, the Court orders plaintiff’s action dismissed on the merits.

SO ORDERED.

      . Although Bartholdi is commonly regarded as the Statue of Liberty’s creator, the statue was actually built by the collaborative effort of some of the most creative Frenchmen of the late 19th century, including the celebrated engineer Alex-andre Gustave Eiffel. See George, The Statue of Liberty 6 (1985).

      . At the time this lawsuit was brought, plaintiff had sold well over 25,000 of its hats.

      . The parties agree that, as a result of his business arrangement with plaintiff, defendant Dana had access to plaintiff’s Crown of Liberty, see infra, Conclusion of Law ¶ 14.

      . References to the Liberty Lid are generally references to both versions of Dana’s hat, except where a difference between the two versions is expressly noted.

      . In the case at bar, the presumption of the validity of plaintiffs copyright is specifically endangered by Past Pluto’s failure to alert the Copyright Office to the Crown of Liberty's relationship to a prior work, the Statue of Liberty. See supra, Finding of Fact ¶ 7. When a copyright claimant fails to advise the Copyright Office of the existence of a prior work in the public domain, the Office is not afforded fair opportunity to pass upon the question of originality in relation to the prior work. See Knickerbocker Toy Co. v. Winterbrook Corp., 554 F.Supp. 1309, 1318 (D.N.H.1982). Furthermore, as this Court has noted on prior occasion, ”[t]he knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action ..., or denying enforcement on the ground of unclean hands.” Russ Berrie & Co., Inc. v. Jerry Elsner Co., 482 F.Supp. 980, 988 (S.D.N.Y.1980) (citations omitted): accord Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d Cir.1984).

      . It could be argued that plaintiffs precise placement of "Statue of Liberty 1886-1986" on its hat (immediately below the spikes and above the windows) is itself an original feature of the Crown of Liberty. Dana's Liberty Lid, however, places the words "1886 LIBERTY 1986” below the windows, just above the hole for the purchaser's head. Thus, Dana’s design is different, at least as different as it could be given the obviously limited ways in which one can design a flat foam hat of the Statue of Liberty. See infra, Conclusions of Law ¶¶ 11, 14.

      . Under the copyright laws, an article with an "intrinsic utilitarian function,” 17 U.S.C. § 101, is not protected except to the extent that its design incorporates artistic features that can be identified separately from the article’s functional elements. See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 992 (2d Cir.1980). The corollary proposition is that a work of applied art or industrial design which has aesthetic or artistic features that cannot be identified separately from the work’s useful elements is simply beyond the protection of copyright. See Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 418 (2d Cir.1985). Thus, were I to find that plaintiffs hat is a hat and nothing but that, cf. Kieselstein-Cord, supra, 632 F.2d at 994 (Weinstein, J., dissenting), plaintiffs action could be dismissed on the basic ground that its work is too utilitarian in nature to deserve copyright protection. Although defendants have raised this point, they have not pressed it; thus it seems inappropriate to decide the instant case on such narrow grounds.

      . The Court noted that Uncle Sam mechanical banks had been a classic piece of Americana since 1886, see L. Batlin & Sons, 536 F.2d at 488, coincidentally the same year that the Statue of Liberty commenced her historic residence in New York Harbor.

      . Even where both access and substantial similarity are proven, the trial court may still find that copying has not been proven if it believes defendant’s evidence of independent creation. See Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d at 1092 n. 2. Although the affidavit of Dana’s artist and silkscreener is credible evidence of independent creation, see supra, Finding of Fact ¶ 11, Dana’s own testimony regarding his creation of the original sketch for his Liberty Lid is not entirely credible, see supra, Finding of Fact ¶ 9. Accordingly, I have not gone so far as to make a finding of independent creation. Of course, such a finding is in no sense necessary, since I have already determined that plaintiff does not own a valid copyright and that defendants did not copy plaintiffs hat.

      . Because plaintiff never asserted a claim for misappropriation, it is hardly necessary to decide whether such a claim would have been preempted by federal copyright law. See generally, Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F.Supp. at 1531-36. Nonetheless, it appears that a misappropriation claim by Past Pluto would not have been preempted, insofar as such, a claim would have been based on defendants’ misappropriation of plaintiffs idea, a subject matter beyond the scope of copyright law. See 17 U.S.C. § 102(b). It is clear that any state law action covering subject matter that does not come within the subject matter of federal copyright law as defined in 17 U.S.C. §§ 102 and 103 is not preempted. See Mayer, supra, 601 F.Supp. at 1532; 17 U.S.C. § 301(b)(1).