United States District Court, Southern District of New York
March 15, 1990
PETER PAN FABRICS, INC. AND HENRY GLASS & CO., PLAINTIFFS,
ROSSTEX FABRICS, INC. AND MARTIN ROSS, DEFENDANTS.
The opinion of the court was delivered by: Edelstein, District Judge.
OPINION AND ORDER
This is an action for copyright infringement. Plaintiffs allege that
defendants copied their design, "Style 1408, Range 100, Patt. 14261X" for
which the Register of Copyrights issued Copyright No, VA 218-543.*fn1
This design is printed on fabric and sold by plaintiffs.
Defendants move under Rule 56, Fed.R. Civ.P., for summary judgment
dismissing the complaint on the ground that plaintiffs' copyright is
invalid. Plaintiffs cross-move for summary judgment granting them a
permanent injunction against defendants and damages. For the reasons
stated below, defendants' motion for summary judgment is denied and
plaintiffs' cross-motion for summary judgment is granted.
A. The Parties
Plaintiff Peter Pan Fabrics, Inc. ("Peter Pan") is the wholly-owned
subsidiary of Henry-Glass & Co. ("Glass") which is a converter of
fabrics. For purposes of this action, these two plaintiffs will be
treated as one entity.
Defendant Rosstex Fabrics, Inc. ("Rosstex") is also a converter of
fabrics. Defendant Martin Ross is the president, a director and major
stockholder of Rosstex who personally participated in the copying,
printing and sale of the fabric in issue.
B. The Facts
In March 1985, Penny Watts, an agent for Harmer Munro, a textile design
studio in London, England, sold to Glass for $275 a design which was the
original creation of Harmer Munro. Prior to its sale to Glass, the design
was not shown to any other persons except on a confidential basis for
sale purposes. Upon the sale of the design, Harmer Munro and its
employees renounced all title, right or interest therein. When a question
was raised by defendant Rosstex as to Glass' ownership of the design, a
duly acknowledged bill of sale was executed by Penny Watts.
After the purchase of the design from Penny Watts, Zelma Goldstein, a
Vice-President of Glass who is the head of its design department, had her
staff prepare a new design known as "Style 1403, Range 110, Patt. 14261X"
which was based on the design she had purchased from Penny Watts. Ms.
Goldstein is unable to recall precisely what changes were made in the
Harmer Munro design, but she does know that some changes were made, that
stripes across the lower portion of the design were omitted, and that the
design was put in repeat.
The printed fabric was then created from the painting in repeat.
Neither the design purchased from Watts nor the painting made by Glass'
design studio can be located. Plaintiffs contend that the new design in
the fabric is derived from the design it purchased from Harmer Munro, but
that Munro was not the author of the completed design plaintiffs filed
with the Copyright Office.
Plaintiffs' affidavits demonstrate that putting a design in repeat
requires repainting the design to change its size, and often its
spacing, so that the design, or a multiple of the design, fits the screen
or roller to be used to print it on fabric, and that one end of the
design matches the other end precisely, making possible the printing of a
roll of fabric with a continuous design. In the course of repainting a
design like the one at issue the irregular edges of the spots as painted
in repeat will vary from the original painting and the spatial
relationship of the various spots will be slightly altered.
The fabric was first offered for sale June 21, 1985. After selling
large quantities of the new design, Glass learned that the new design had
been copied by defendants. A copyright application was filed and a
copyright was issued April 24, 1986.*fn2
II. MOTIONS FOR SUMMARY JUDGMENT
A. Defendants' Motion for Summary Judgment
Defendants contend that plaintiffs' copyright is invalid and that
summary judgment dismissing the action is warranted based on the
1. The alleged copyright is invalid because the new design is not an
2. The alleged copyright is invalid because, even if the new design was
somewhat different from the Harmer Munro painting from which it was
derived, it is not sufficiently different to be eligible for copyright
3. The alleged copyright is invalid because even if some elements of
the new design were sufficiently different from the Harmer Munro painting
to be eligible for copyright protection, the Harmer Munro painting has
been destroyed. Accordingly, plaintiffs cannot meet their burden of
proving which elements (if any) of the new design were different enough to
be protected and which elements were merely copied.
4. The copyright ownership in the Harmer Munro painting was not
transferred to Peter Pan by means of a legally sufficient writing.
Defendants' arguments lend credence to the adage "less is more." In
fact, defendants' motion papers exemplify the corollary, "more is less."
However, each of defendants' contentions will be addressed.
Defendants first argue that plaintiffs' copyright is invalid because
the new design was not an original work. However, the deposition
testimony of Zelma Goldstein belies this contention. Ms. Goldstein
testified that she modified the Harmer Munro design by eliminating the
stripes and altering the size and layout of the dashes and by putting the
design into repent.
Putting a design in repeat requires some altering of the size and
layout so that repeats of the design fit the screen used to print it.
Defendants' argument that plaintiffs added nothing original to the design
is based on a misinterpretation of Ms. Goldstein's deposition testimony.
Moreover, the law in this circuit with regard to textile designs is
The embellishment or expansion of the original design
in repeat, so as to broaden the design and thereby
cover a bolt of cloth, together with beginning the
pattern in a particular way so as to avoid showing an
unsightly joint when the pattern is printed on
textiles on a continual basis, constitutes modest but
sufficient originality so as to support the
Soptra Fabrics, Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092,
1094 (2d Cir. 1974) citing Peter Pan Fabrics v. Dan River Mills,
295 F. Supp. 1366 (S.D.N.Y.), aff'd, 415 F.2d 1007 (1969) (per curiam).
The minimal degree of originality required to support a copyright in the
textile field, where the design printed is original, is "not very high."
Soptra, 1092 F.2d at 1094. Thus, defendants' argument of lack of
originality is spurious. Plaintiffs' design is original under the law in
Defendants' second argument is that even if original, the design is not
sufficiently different to be eligible for copyright protection.
Defendants base this contention on 17 U.S.C. § 101, 103.
According to Nimmer,
"a work will be considered a derivative work only if
it would be considered an infringing work if the
material which it has derived from a preexisting work
had been taken without the consent of a copyright
proprietor of such preexisting work. It is saved from
being an infringing work only because the borrowed or
copied material was taken with the consent of the
copyright owner of the prior work or because the prior
work has entered the public domain."
Nimmer on Copyright § 3.01, p. 3-3. From this comment it is clear
that a work is derivative only if it takes from a work already covered by
copyright or which is in the public domain. See Nimmer on Copyright
§§ 8.04, 3.06. The cases cited by defendants are not dispositive
insofar as they deal with works already copyrighted or in the public
domain. See Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983);
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976). Because
Harmer Munro never copyrighted the design nor was the work ever in the
public domain,*fn3 the copyright in issue is not a derivative work with
the meaning of 17 U.S.C. § 101, 103. Accordingly, defendants' second
argument is unconvincing.
Defendants' third argument is that because plaintiffs destroyed the
painting the plaintiffs cannot prove which elements of their design were
protected. Plaintiffs' affidavits demonstrate the sheer volume of designs
created by them and the number of draft materials purchased to generate
these designs. Defendants have not proven a motive for destroying the
Harmer Munro painting which would contradict plaintiffs' allegation that
it was destroyed merely to save space.
In the instant case, the destroyed design was an unpublished design
which was the property of plaintiffs. It is inconceivable that defendants
argue that they could have acquired any rights to use the design —
which they admittedly copied — based on an argument that
destruction of the painting vitiates plaintiffs' copyright.
Furthermore, defendants' contention is contrary to the holding in Dan
River Mills, 295 F. Supp. at 1368, where a slight modification of a
design to put it into repeat satisfied the originality test. Because the
design was put into repeat, a finding of originality in the instant case
is warranted. As a result, plaintiffs need not produce the painting to
prove the design's originality. Accordingly, defendants' contentions are
unavailing in this regard.
Finally, defendants inexplicably assert that a copyright in the Munro
painting was not transferred to plaintiffs by a reasonably sufficient
writing — despite the fact that the Munro work was never
copyrighted. This argument can be dealt with in short order. As
defendants correctly assert, "a transfer of copyright ownership . . . is
not valid unless an instrument of conveyance or a note or memorandum of
the transfer, is in writing and signed by the owner of the rights
conveyed or such owner's duly authorized agent." 17 U.S.C. § 204
(a). Moreover, the Copyright Act provides that transfer of ownership of a
material object does not convey rights in a copyrighted work.
17 U.S.C. § 202. Defendants cite legislative history of
17 U.S.C. § 202 suggesting that a bill of sale would be insufficient
to transfer a copyright from Munro to plaintiff. On its face this
assertion is absolutely correct. However, it is a specious argument,
inapposite to the facts at hand.
In order to transfer ownership of a copyright, a written instrument of
transfer must be executed. No such valid writing exists in this case.
However, no such writing exists because this is not a case of transfer of
copyright. Rather, an uncopyrighted painting was sold to plaintiffs with
a transfer of all rights. At all times the
copyright has been plaintiffs', never Harmer Munro's. Sections 202 and
204 of the Copyright Act apply to an assignment of an existing
copyright. In the instant case plaintiffs are not assignees of an
existing copyright but are copyright owners. Defendants' argument
distorts the facts and the law and is meritless.
None of the four arguments addressing the validity of the copyright
persuade this court that plaintiffs' copyright fails. Accordingly,
defendants' motion for summary judgment on the ground that the copyright
is invalid is denied.*fn4
B. Plaintiffs Cross-Motion for Summary Judgment
The central question at issue in plaintiffs' motion is the validity of
plaintiffs' copyright. Plaintiffs have provided the court with a copy of
copyright certificate VA 218-543 issued to Peter Pan covering "Style
1403, Range 110, Patt. 14261X." Pursuant to Section 410(n) of the
Copyright Act, a certificate constitutes prima facie evidence of the
validity of the copyright. Defendants have made no showing to the
contrary. Accordingly, the copyright is deemed valid.*fn5 See Durham
Industries, Inc. v. Tomy Corp., 630 F.2d 905, 911 (2d Cir. 1980);
Dollcraft Industries, Ltd. v. Well-Made Toy Mfg. Co., 479 F. Supp. 1105,
1114 (E.D.NY. 1978); United Merchants & Manufacturers Inc. v. Sarne
Company, 278 F. Supp. 162, 164 (S.D.N.Y. 1967).
When a prima facie case of infringement has been made, a plaintiff is
entitled to injunctive relief. See Malden Mills, Inc. v. Regency Mills,
Inc., 626 F.2d 1112 (2d Cir. 1950); Soptra Fabrics Corp. v. Stafford
Knitting Mills, Inc., 490 F.2d 1092 (2d Cir. 1974); Peter Pan Fabrics
Inc., et al. v. Dixon Textile Corp., 280 F.2d 800 (2d Cir. 1960); Peter
Pan Fabrics Inc., et al. v. Martin Weiner Corp., et al., 173 F. Supp. 292
Plaintiffs have demonstrated that their design is original, that
defendants had access to their design and that they copied it. Defendants
have not set forth specific facts showing a genuine issue for trial.*fn6
Accordingly, plaintiffs' motion for summary judgment permanently
enjoining defendants from further infringement of plaintiffs' copyright
pursuant to Rule 56(e) Fed. R.Civ.P. is granted.
Defendants caused approximately 31,000 yards of fabric imprinted with
the infringing design to be manufactured and sold. The affidavit of
Robert Finkeisteel, plaintiffs' president, with over 35 years of
experience in the converting business, asserts that defendants' profits
on the infringing fabric was at least $.30 per yard, and that if
plaintiff had sold the same quantity of fabric at its usual price, it
would have made at least $.40 per yard.
Plaintiffs further aver that since defendants' profits at $.30 per yard
for 31,000 yards were $9,300 and since plaintiffs' loss of profits,
computed at $.43 per yard is $13,330, plaintiffs are entitled to recover
from defendants the total amount of $22,630, excluding any claim for
statutory damages and attorney fees.
In their reply papers, defendants assert that a motion for summary
judgment is an inappropriate vehicle for asserting damages. Defendants
further contend that the suggested profit of $.30 per yard is
inaccurate. Rather, they contend that their actual profits were no more
than $5,705.20 an amount which is approximately $3,700 less than
plaintiffs' asserted amount.
Section 504(b) of the Copyright Act reads as follows:
"Actual Damages and Profits — The copyright
owner is entitled to recover the actual damages
suffered by him or her as a result of the
infringement, and any
profits of the infringer that are not attributable to
the infringement and are not taken into account in
computing the actual damages. In establishing the
infringer's profits, the copyright owner is required
to present proof only of the infringer's gross
revenue, and the infringer is required to prove his or
her deductible expenses and the element of profit
attributable to factors other than the copyrighted
Plaintiffs cite a case which they contend is directly on point where
recovery of both the profits of the infringer and the profits of the
copyright owner would have realized on the same sales. Design Resources
Inc. v. John Wolf Decorative Fabrics, 83 Civ. 7606 (CBM) pp. 14-20, 1985
WL 2445 relying on Lottie Joplin Thomas Trust v. Crown Publishers,
592 F.2d 651, 657 (2d Cir. 1978). In Design Resources, however, the price
of the two fabrics at issue was only slightly different. In the instant
case, the prices are more than slightly different with plaintiffs selling
a higher priced good. Thus, there is a question of how many customers of
defendants would have been shared with plaintiffs. This question needs to
be answered before plaintiffs' actual damages can be calculated.
Moreover, the court does not wish to rely solely on plaintiffs'
affidavits in fixing damages. As Judge Feinberg noted in Abeshouse v.
Ultragraphics, Inc., 754 F.2d 467, 470 (2d Cir. 1985), an award made
pursuant to § 504 must not be based upon undue speculation and must
not entail the double counting of profits and damages expressly barred by
At this juncture the court will defer ruling on the damages issue and
will direct that this case be referred to a Magistrate for an inquest on
damages appropriate in this case. Accordingly, upon Report and
Recommendation of the Magistrate, the court can determine, in accord with
Section 504 of the Copyright Act, plaintiffs' actual damages, and profits
of the infringer which are not taken into account in computing
plaintiffs' actual damages.
Defendants' motion for summary judgment is denied. Plaintiffs'
cross-motion for summary judgment granting them a permanent injunction
against defendants is granted. Damages to be awarded plaintiffs will be
determined after an inquest by a Magistrate.