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.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
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
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
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
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.
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 ...