In November 1990, Lida's internal art department created a
wholly different design, entitled the "Michelangelo design." 2nd
Compl. ¶ 27. Certificate of registration No. VA 427-245 was
awarded Lida for that design on December 17, 1990.
By January and March of 1991, B.B. Blu had ordered from Lida
approximately 700 yards of material containing the Michelangelo
design. 2nd Compl. ¶ 34. Subsequently, garments made with a
design almost identical to the Michelangelo design and
manufactured by Texollini, appeared in stores under B.B. Blu's
label. Texollini's rendition sold in the marketplace at a price
substantially lower than that charged for Lida's Michelangelo.
2nd Compl. ¶ 42.
The standard for granting a preliminary injunction requires a
showing of irreparable harm and either: (1) likelihood of success
on the merits or (2) sufficiently serious questions going to the
merits to make them a fair ground for litigation. Hasbro
Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir.
1985); Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc.,
596 F.2d 70, 72 (2d Cir. 1979). In addition, a balancing of the hardships
must tip decidedly toward the party requesting the preliminary
B.B. Blu and Texollini oppose injunctive relief only as to the
Crayola design.*fn3 Production of a certificate of registration
to a design presumptively constitutes a showing of copyright
ownership. Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908
(2d Cir. 1980). Lida has produced such a certificate.
However, Texollini maintains that Lida, in its application for
a copyright, misrepresented certain material facts regarding the
design's origins and thus the copyright is a nullity.
Specifically, Lida stated on its application to the registry that
it was the design's author when in fact the design was brokered
to Lida from an independent party and the design's creator was
not employed directly by the corporation. In response to question
six on Lida's application for a copyright, namely, "identify any
pre-existing work or works that this work is based on or
incorporates," Lida wrote "N/A," apparently indicating the design
was not a derivative work. 2nd Compl., Exh. B.
Because there are false statements on the certificate,
Texollini claims that Lida's evidence of ownership of a valid
copyright is null and void. I disagree. "Only the `knowing
failure to advise the Copyright Office of facts which might have
occasioned a rejection of the application constitute[s] reason
for holding the registration invalid, and thus incapable of
supporting an infringement action . . . or denying enforcement on
the grounds of unclean hands . . .'" Eckes v. Card Prices
Update, 736 F.2d 859, 861-62 (2d Cir. 1984) (quoting Russ
Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F. Supp. 980,
988 (S.D.N.Y. 1980)). Texollini has adduced no evidence that Lida
was engaged in fraudulent conduct by these errors in its
application. An innocent or inadvertent omission will not
invalidate a copyright registration. Eckes, 736 F.2d at 862. It
is certainly not outlandish to think that Lida considered itself
the originator of the copyright design since it purchased rights
which are attendant to that status. The misrepresentation can
easily be construed as inadvertent and unintentional. Therefore,
under these circumstances there is insufficient evidence to rebut
the presumption of validity for Lida's copyright.
Texollini next challenges the transfer of rights in the design.
In this case, Found, through her agent Booth, sold to Lida an
uncopyrighted work with a transfer of all rights in that work.
There can be no question of improper transfer of copyright
because no copyright was ever transferred.*fn4 Lida was never an
assignee of an existing copyright, but was the copyright
owner. See Peter Pan Fabrics, Inc. v. Rosstex Fabrics, Inc.,
733 F. Supp. 174, 177 (S.D.N.Y. 1990) (uncopyrighted painting,
sold to plaintiffs with a transfer of all rights, entitled
plaintiffs to become copyright owner for fabric design based on
painting when the copyright was registered).
Lida can prove infringement of its copyright by demonstrating
access to the copyrighted works and substantial similarities
between the designs. Business Trends Analysts, Inc. v. The
Freedonia Group, Inc., 887 F.2d 399, 402 (2d Cir. 1989).
Texollini and B.B. Blu do not contest for the purposes of this
motion that they had access to the works.
If an "average lay observer would recognize the alleged copy as
being appropriated from the copyrighted work," then that
constitutes substantial similarity. Novelty Textile Mills, Inc.,
v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2nd Cir. 1977)
(quoting Ideal Toy Corp. v. Fab-Lu, Ltd., 360 F.2d 1021, 1022
(2d Cir. 1966)). There are a number of elements in the Crayola
Garden design that are all but identical to the challenged
design. For example, there are: a paisley (tear drop shape
figure), Stewart Aff., Exhs. B and C, element 1; a flower design,
element 2; a series of dots, element 4; a series of triangles and
dots, element 5; a geometric design, element 7; and a series of
triangles and dots, element 9. Other elements are very similar,
such as the geometric/floral designs, elements 3 and 8. Indeed,
an average lay observer in the case at bar would easily be misled
as to the origin of the infringing design and would likely
determine that Texollini's copy was appropriated from the
In a copyright infringement case, irreparable injury should
ordinarily be presumed if the copyright is shown to be prima
facie valid and defendant is shown to have infringed that
copyright. Atari, Inc. v. North Am. Philips Consumer Elec.
Corp., 672 F.2d 607, 620 (7th Cir.), cert. denied,
459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982) (citing Wainwright
Sec., Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 94 (2d
Cir. 1977), cert. denied, 434 U.S. 1014, 98 S.Ct. 730, 54
L.Ed.2d 759 (1978)). The allegations of irreparable injury need
not be very detailed if a prima facie case of copyright
infringement can be shown. Wainwright, 558 F.2d at 94. As
aforementioned, Lida's copyright ownership is prima facie valid
and Texollini was shown to have infringed that copyright.
Texollini argues however, that because it has ceased printing and
distributing the contested design, a preliminary injunction is
unduly burdensome and inappropriate. Further, according to
Texollini, the balancing of the hardships weighs in its favor
because only a small amount of fabric, relative to its overall
production, was sold and it has the capacity to pay in damages
Lida's measurable losses.
It appears that on two occasions B.B. Blu received fabric
samples from Lida but instead of paying full price for the
copyrighted fabric, it sought to ride on the coattails of Lida's
popularity, purchasing cheaper "knock offs" from Texollini. Sale
of inferior quality fabrics containing the Lida designs, at a
lower price and on inferior fabric, threatened Lida's reputation
in the marketplace, caused a loss of sales, and could have
potentially diluted the overall worth of its designs. The
copyright laws were enacted to prevent just this type of wilful
infringement. Although Texollini earnestly represents that it
will no longer market the challenged design, its representations
are insufficient to convince me that an injunction should not
issue in this case. Certainly Texollini loses nothing of any
substance if an injunction were put into place. Lida, however,
would be assured its status as a rightful copyright owner should
Texollini be preliminarily enjoined.
B.B. Blu consents to all but one of Lida's requests for interim
relief. B.B. Blu objects to the disclosure of its customers,
claiming that at this point in the litigation such a request is
premature. B.B. Blu further asserts that it would be inequitable
to require B.B. Blu to reveal customer lists to Lida because it
threatens its good will and ongoing business relationships in the
marketplace, especially in light of the small
amount of fabric sold. I disagree. The sales of the infringing
garments involved at least $100,000.00, amounting to almost 10%
of B.B. Blu's total sales to these customers. B.B. Blu appears to
have been the instigator and source of the mischief done here. To
protect its reputation in the marketplace would be in effect to
For the foregoing reasons, the preliminary injunction shall
issue and B.B. Blu will be required to supply, within ten days of
the date hereof, a list of its customers to Lida.