The opinion of the court was delivered by: Edelstein, District Judge.
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.
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.
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 ...