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October 4, 1990


The opinion of the court was delivered by: Newman, Senior Judge of the Court of International Trade, sitting as a United States District Court Judge by designation:


Folio Impressions, Inc. ("Folio"), a New York corporation engaged in the importation and sale of fabric to apparel manufacturers and others, brings this action for alleged infringement of a copyright in a textile design pattern pursuant to section 501 of the Copyright Act of 1976, 17 U.S.C. § 501 (1988). Defendant Byer California ("Byer") is a California corporation with offices in New York engaged in the business of manufacturing garments. Defendant Lida Manufacturing Co. ("Lida") is a North Carolina corporation authorized to do business in New York and is in competition with Folio in selling printed fabric.

Folio claims infringement of its copyright on a textile design pattern purchased from an art studio in Lyon, France in that defendants manufactured and sold fabrics and wearing apparel utilizing a substantially similar design.*fn1 Defendants assert that Folio's copyright is invalid on the grounds that Folio's design lacks originality and because Folio failed to disclose to the Copyright office that a portion of its design was based on and copied from preexisting public domain material. Alternatively, defendants deny any infringement claiming that defendants' design pattern is distinguishable from and does not bear a substantial similarity to Folio's design.

Folio seeks recovery of: (1) defendants' profits and Folio's attorney's fees, 17 U.S.C. § 504, 505 (1988), respectively; and (2) a permanent injunction prohibiting infringement of plaintiff's copyright in "Pattern # 1365." See 17 U.S.C. § 502 (1988)*fn2. Defendants seek dismissal of the complaint and also, pursuant to 17 U.S.C. § 505 (1988), seek attorney's fees in the event that they prevail in this action.

Jurisdiction rests on 28 U.S.C. § 1338(a) (1988), and venue is proper in this district pursuant to 28 U.S.C. § 1400(a) (1988). The action was tried to the court without a jury.

For reasons stated below, the court holds that Folio's copyright registration is valid because Pattern # 1365 qualifies as a derivative work insofar as the design pattern's floral component originally elaborates upon the background portion of the textile design pattern. Regarding such background portion of Pattern # 1365, the court finds that it was copied from a document in the public domain. The court, however, holds in favor of defendants on the infringement issue because defendants' design pattern is not substantially similar to Folio's design pattern.


In accordance with Rule 52, Fed.R.Civ.P., the court makes the following Findings of Fact and Conclusions of Law:


On July 28, 1987 Raoul Bruckert Dessins Textiles ("Bruckert Design Studio"), located in Lyon, France, created a textile design pattern identified as "RG28.1." Folio purchased RG28.1 from Bruckert Design Studio for $275.00 and received a written assignment, dated August 28, 1987, of Bruckert Design Studio's rights in such design (plaintiff's exhibit 2 ("Px 2")). Notably, Bruckert Design Studio sold Folio the design pattern representing it to be an original creation. Thereafter, Folio renamed design pattern RG28.1 as Pattern # 1365, printed it onto fabric (see Addendum A), and on September 5, 1987 published Pattern # 1365. Folio has since promoted and sold fabric imprinted with Pattern # 1365 to manufacturers of garments (Trial Transcript at 16 ("Tr. 16") (Px 4). Pattern # 1365 was later registered with the office of the Register of Copyrights and Folio was issued Certificate of Registration No. VA294-989, dated February 18, 1988 (Px 3).

Byer obtained a swatch of fabric imprinted with Folio's Pattern # 1365 subsequent to Folio's September 5 publication (the "Folio swatch") (Tr. 16). Byer presented the Folio swatch to Howard Hauptman ("Hauptman"), a Lida employee, and inquired as to whether Lida had a similar design. Hauptman in turn brought the Folio swatch to Lida's head stylist, Ms. Carol Howcroft ("Ms. Howcroft"), who responded that although Lida's design staff hadn't already created a similar design pattern Lida possessed reference materials that were similar to Folio's design pattern and could be used to create a design for Byer (Tr. 54-55). Ms. Howcroft's staff subsequently created a design pattern entitled "Baroque Rose, Pattern # 7480" ("Baroque Rose") (see Addendum B), and offered it for sale (Tr. 43-44).

On March 11, 1988 Byer presented Lida with a purchase order for Baroque Rose fabric. Subsequently, on April 8, 1988 Lida shipped the first order of the Baroque Rose design imprinted on rayon challis fabric for Byer's account. Byer thereafter manufactured wearing apparel utilizing the Baroque Rose fabric and sold approximately 1,656 dozen garments to its various customers.

Validity of Copyright Registration VA294-989

To prove copyright infringement, Folio "must show ownership of a valid copyright and copying by defendants." Novelty Textile Mills, Inc. v. Joan Fabric Corp., 558 F.2d 1090, 1092 (2d Cir. 1977). Folio correctly argues that since it was issued a copyright registration certificate for Pattern # 1365 within five years of first publication, Folio has fulfilled the requirements for making a prima facie showing of ownership and validity. 17 U.S.C. § 410(c) (1988); Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 414 (2d Cir. 1985). Folio relies solely on the presumption of validity afforded by its certificate of registration. It is well settled, however, that a timely issued certificate of registration creates only a rebuttable presumption of copyright validity, and defendants may offer evidentiary proof casting doubt on the copyright's validity. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980).

Defendants challenge the validity of Folio's copyright on essentially two grounds: (1) Folio's design pattern lacks originality; and (2) Folio's certificate of registration omitted disclosure that the design pattern was a "derivative work" based upon preexisting public domain material.


Initially, the court addresses defendants' principal contention that design pattern RG28.1 (Folio's Pattern # 1365) lacks originality. Since copyright validity necessarily subsumes design originality, defendants bear the burden of establishing lack of originality*fn3. Defendants argue that Folio's design pattern lacks originality, and hence validity, because: (1) the background of RG28.1 is not original, but rather copied from a public domain document; and (2) the placement and arrangement of the floral component over the background lacks sufficient artistic skill to be considered "original."

Here, the issue of copyright validity concerns the originality of design pattern RG28.1 produced by Richard Sadjan ("Sadjan"), an employee of Bruckert Design Studio. The evidence presented to rebut Folio's prima facie showing of originality is the deposition testimony of defendants' witness Ms. Catherine Bruckert, ("Ms. Bruckert"), and the trial testimony of defendants' expert, Professor Lee Stewart ("Prof. Stewart") corroborating Ms. Bruckert's testimony.

At trial, Folio objected to the admission of Ms. Bruckert's deposition testimony on the ground that the witness lacked personal knowledge of the actual source used by Sadjan in creating RG28.1. In its post-trial brief, Folio persists in its objection with regard to the admissibility of Ms. Bruckert's deposition testimony, citing Rule 602, Fed.R.Evid., and requests the court to reverse its trial ruling admitting into evidence the objected portions of the transcript that dealt with the origin of design pattern RG28.1. Further, Folio maintains that Ms. Bruckert's testimony is clear that she did not know how Sadjan created design pattern RG28.1.

The court adheres to its trial ruling that Ms. Bruckert's deposition testimony was admissible. Ms. Bruckert functions as "commercial attache" for the Bruckert Design Studio and is in charge of all sales, particularly foreign sales. She has held that position since the inception of the Studio in 1972. Ms. Bruckert's primary responsibility at the Bruckert Design Studio is selling designs to domestic and foreign clientele (Dx A 8-9). Ms. Bruckert is the daughter of the Bruckert Design Studio's founder and head designer, Raoul Bruckert. Ms. Bruckert never received any formal education in design, but she has been part of and closely observed her father's artistic accomplishments in the field. Ms. Bruckert commented: "[M]y father is an artist and I have lived in this world, this media [world] since I was a very little child" (Dx A 7-9). Although Ms. Bruckert focuses on sales, her overall responsibilities as second in command of the Studio whenever her father is absent (Dx A 16) include supervising the designers and overseeing their work (Dx A 15-16). Under all the facts and circumstances, the court is persuaded that Ms. Bruckert had sufficient "personal knowledge" regarding the creation of RG28.1 to satisfy the requirements of Rule 602.

Fed.R.Evid. 602 requires a showing that a laywitness has personal knowledge of the matter concerning which the witness gives testimony. The foundation requirement of personal knowledge, however, may, but need not be proved by the witness' own testimony. Here, however, Ms. Bruckert's own testimony provided the ...

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