The opinion of the court was delivered by: CANNELLA
CANNELLA, District Judge:
Application by Greeff Fabrics, Inc. ("Greeff"), plaintiff herein, for a preliminary injunction enjoining defendant Malden Mills Industries, Inc. ("Malden"), pending final determination of this action from manufacturing, converting, selling or distributing textiles bearing a reproduction of the copyrighted work of art known as "58710-13 Contemplation" is denied. Jurisdiction is vested in this Court pursuant to 17 U.S.C. § 112 and 28 U.S.C. § 1338.
Petitioner states that it is "one of the leading designer fabric houses in the world,"
maintaining a large design studio in order to "offer the finest reproduction of original works of art" which it has created or purchased.
The design here in issue, first published on August 15, 1974, was filed with the Register of Copyrights and granted Copyright No. Gp 93648 on September 13, 1974.
Since August 15, 1974, all copies of the "Contemplation" design published by plaintiff have been published in strict conformity with the applicable copyright laws. However, some time prior to the fall of 1975, petitioner discovered a textile fabric called "Camelot," produced and sold by Belle Fabrics, Inc. ("Belle"), which embodied its copyrighted "Contemplation" design.
Greeff initiated legal proceedings against Belle for copyright infringement and on October 20, 1975 that litigation terminated in a consent judgment and agreement whereby petitioner, at Belle's request, granted Belle a limited license to continue selling fabric embodying the subject design for a phase-out period to be completed on or before May 1, 1976. The agreement contains an additional proviso requiring Belle to place a Greeff copyright notice on all fabric sold or displayed by Belle bearing the "Contemplation" design.
The affidavit of Jerimiah Lewkowicz, Belle's president, details Belle's attempts to comply with the notice requirement of the licensing agreement. Using a rubber stamp provided by Greeff's attorney, the copyright notice
was applied to a hang tag which was then affixed to each and every roll of "Camelot" fabric sold by Belle.
It is respondent's position that its challenged fabric design was innocently copied from a sample of "Camelot" fabric which bore no copyright notice. Milton Glasser, a Malden employee, testified that Malden's first exposure to the Belle fabric occurred when one of his customers gave him a piece of the Belle fabric, approximately one yard long and selvage to selvage in width, and asked him to copy the design. This swatch contained no copyright notice. Before copying this design, respondent instructed its salesmen to search the market to see if anyone was reserving rights in the fabric. They returned with a piece of the same fabric, this one approximately ten yards long (Respondent's Exhibit A). No copyright notice appeared anywhere on this piece, nor on any tag attached thereto.
Concluding that the fabric design was in the public domain, respondent copied it and placed its product on the market. On March 11, 1976 Greeff instituted this suit, charging Malden with infringing the copyright on its "Contemplation" design. The instant application was made shortly thereafter.
In an infringement case a preliminary injunction should issue if petitioner can show "a reasonable probability of prevailing on the merits." Concord Fabrics, Inc. v. Marcus Bros. Textile Corp., 409 F.2d 1315, 1317 (2d Cir. 1969) (per curiam). Generally, this burden is satisfied by a prima facie showing that petitioner is the holder of a valid copyright and that the defendant has infringed. E.g., Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409, 411 (2d Cir. 1970), cert. denied, 401 U.S. 977, 91 S. Ct. 1200, 28 L. Ed. 2d 326 (1971); Leon B. Rosenblatt Textiles Ltd. v. M. Lowenstein & Sons, Inc., 321 F. Supp. 186, 187 (S.D.N.Y. 1970) (Cooper, J.). For purposes of this motion respondent nowhere contests the originality of petitioner's design, the issuance of a valid copyright to petitioner, or the allegation that it has marketed fabrics bearing a facsimile of the design in question without obtaining petitioner's permission. Respondent's principal contention is that the copyright notice required by § 10 of the copyright law
was omitted from the Belle fabric bearing the "Contemplation" design; this omission resulted in dedication of the design to the public domain and consequent forfeiture of copyright protection.
Was the notice affixed to the Belle fabric sufficient under the statute?
When the statutory notice is not affixed to an article which is then passed into the stream of commerce, the copyright holder forfeits his rights under the copyright and the article may be freely copied by others.
Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960); Irving J. Dorfman Co. v. Borlan Industries, Inc., 309 F. Supp. 21, 24 (S.D.N.Y. 1969) (Lasker, J.); American Fabrics Co. v. Lace Art, Inc., 291 F. Supp. 589, 590 (S.D.N.Y. 1968) (Motley, J.); 1 Nimmer on Copyright § 82 at 302 (1975). However, there is much debate as to what the appropriate statutory notice is with respect to a repeating fabric design. The Copyright Act states that the notice "shall be affixed to each copy" of the protected work. 17 U.S.C. § 10. But "[because] of the continuous nature of the composite design printed on [certain fabrics] there are conceptual difficulties inherent in determining the limits of the protected 'work', and the number of 'copies' thereof contained in a bolt" of the finished product. H. M. Kolbe Co. v. Armgus Textile Co., 315 F.2d 70, 72 (2d Cir. 1963).
Petitioner contends that a single copyright notice on an entire roll of material containing a repeating fabric design is sufficient notice.
On the other hand, respondent argues that where such continuous fabric designs are concerned, a notice of copyright is required at least once for each repetition of the entire design.
Although the oft-questioned decision of the Supreme Court in Louis Dejonge & Co. v. Breuker & Kessler, 235 U.S. 33, 35 S. Ct. 6, 59 L. Ed. 113 (1914) is strong authority for the latter proposition, we are aware of no decision which has expressly applied such a rule. However, the weight of authority does indicate that the notice must appear at frequent intervals on the selvage or throughout the design itself. H. M. Kolbe Co. v. Armgus Textile Co., 315 F.2d 70, 73 (2d Cir. 1963) (notice appearing at least once for every repetition of the design is sufficient); Judscott Handprints, Ltd. v. Washington Wall Paper Co., 377 F. Supp. 1372 (E.D.N.Y. 1974) (eighteen inch long notices appearing at 3 3/4" intervals of the selvage of a fifteen inch repeating fabric design is sufficient although notice appears less than once for each repetition of the design); Klauber Brothers, Inc. v. Westchester Lace Works, Inc., 181 U.S.P.Q. 523 (S.D.N.Y. 1974) (single notice at beginning of spools of lace ranging in length from 100 to 500 yards seriously questioned); Leon B. Rosenblatt Textiles Ltd. v. M. Lowenstein & Sons, Inc., 321 F. Supp. 186, 189 (S.D.N.Y. 1970) (notice required at least once for each turn of the roller that prints the design); United Merchants and Manufacturers, Inc. v. Sutton, 282 F. Supp. 588, 590 (S.D.N.Y. 1967) (notice on selvage of each yard of goods is sufficient); United Merchants and Manufacturers, Inc. v. Sarne Co., 278 F. Supp. 162, 165 (S.D.N.Y. 1967) (notice on the selvage of the fabric at every 27 inch "repeat" of the design is sufficient); Key West Hand Print Fabrics, Inc. v. Serbin, Inc., 244 F. Supp. 287, 289-90 (S.D.Fla. 1965) (statutory notice appearing on the selvage once for each repeat of a 30 inch design sufficient); John Wolf Textiles, Inc. v. Andris Fabrics, Inc., 139 U.S.P.Q. 365, 367 (S.D.N.Y. 1962) (notice conspicuously printed on selvage of every yard of goods sufficient); Peter Pan Fabrics, Inc. v. Puritan Dress Co., 207 F. Supp. 563 (S.D.N.Y. 1962) (notice printed on the selvage at nineteen inch intervals sufficient); Peter Pan Fabrics, Inc. v. Candy Frocks, Inc., 187 F. Supp. 334, 336 (S.D.N.Y. 1960) (statutory requirement is met where notice is imprinted at least once for every repeat of the design).
Furthermore, although no court has gone as far as respondent suggests, it is clear that with respect to repetitive designs imprinted on a continuous ...