appearance. The Lida Rose has a single stem, is softer looking
and the lines are more painterly and well rounded. It looks
fuller in that there is more white space separating the black
lines. Additionally, the Lida Rose is slightly larger and each
blossom in the Baroque Rose design pattern has many different
nuances; in other words, no two blossoms are precisely alike.
Conversely, the Folio Rose is smaller and "cutouts" or copies
of a single blossom have been symmetrically replicated all over
the background of the design pattern. The court heretofore
found that Sadjan's placement and spacing is considered
mechanical skill and not entitled to copyright protection.
The court is further guided by the well known fact that many
purchasers of garments are interested in a particular design
pattern, and before making a purchase do not merely observe a
garment from a distance. Instead, purchasers who are shopping
for a particular design pattern will closely inspect the
wearing apparel to determine if the desired design pattern is
present in the fabric, and then perhaps stand back to observe
the overall presentation. Even under casual scrutiny, the
defendants' Lida Rose is markedly dissimilar from the Folio
Rose as they are imposed over their respective backgrounds
(which are also markedly different).
In summary, applying the ordinary observer test, the court
determines that defendants' floral component is not
substantially similar to Folio's floral component, and hence
does not infringe on Folio's copyright registration, which the
court finds protects only the original additions contributed by
Sadjan to the unprotectable documentary background.
Defendants have failed to establish that Folio's copyright is
totally invalid. Plaintiff's particular rose blossom floral
component, insofar as it adds to Pattern # 1365's documentary
background, is found to be original and thus protectable as a
derivative work. Moreover, Folio's failure to respond to the
questions in its copyright registration certificate related to
derivative works was not done knowingly, but rather innocently
and is of no consequence.
Folio, however, has failed to sustain its burden of proving
infringement. The court finds no direct proof of copying by
defendants and the parties' floral components are not found to
be substantially similar.
Concerning defendants' request for attorney's fees, the
Copyright Act provides that the district court, in its
discretion, may award attorney's fees to the prevailing party.
17 U.S.C. § 505 (1988). Although attorney's fees are awarded as
a matter of course to a victorious plaintiff, a defendant who
prevails will recover if "plaintiff's claims are objectively
without reasonable merit," Diamond v. Am-Law Pub. Corp.,
745 F.2d 142, 148 (2d Cir. 1984), or are "baseless, frivolous,
unreasonable or brought in bad faith," Roth v. Pritikin,
787 F.2d 54, 57 (2d Cir. 1986). Since there has been no showing
that Folio's lawsuit here is "baseless, frivolous,
unreasonable, brought in bad faith or objectively without
merit," each side shall bear its own attorney's fees.
For the foregoing reasons, Folio's request seeking
defendants' profits and Folio's application for a permanent
injunction are denied, and Folio's action for copyright
infringement is dismissed.
The preliminary injunction in this case is dissolved. The
clerk of the court is instructed to enter judgment for
defendants dismissing the complaint and dissolving the
FOLIO'S DESIGN PATTERN #1365
LIDA'S DESIGN PATTERN BAROQUE ROSE #7480