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December 16, 1996

INTIMO, INC., Plaintiff,

The opinion of the court was delivered by: COTE

 DENISE COTE, District Judge:

 Defendant submitted a trial brief to this Court contending, inter alia, that plaintiff lacks standing to bring this suit for copyright infringement. At issue are two written assignments of copyrights and the effectiveness of later amendments to those assignments. Defendant contends that the original assignments did not transfer a right to sue for any existing or prior infringement, and that a later amendment to the assignment cannot cure the standing defect after filing its action. For the reasons given below, the amendments are effective and, therefore, plaintiff does have standing to sue for infringements occurring prior to the January 1995 assignment.


 This case involves copyrights to two design patterns for boxer shorts -- "Grandma's Christmas Boxer" and "Candy Canes." The authors of the designs assigned the copyrights in the designs to plaintiff in agreements dated January 11 and 12, 1995. The relevant language of the assignments states that the assignor gives to plaintiff "all rights, title and interest, legal and equitable, in and to the copyrighted works." The assignments do not mention any transfer of claims or causes of action for infringements prior to the assignment. Plaintiff registered its copyright to the two designs and received a certificate of registration on March 13, 1995.

 Plaintiff filed suit against the defendant in this Court on June 1, 1995, alleging copyright infringement for sales that took place both before and after -- but primarily before -- the January 1995 assignment. Discovery ensued on all issues and the parties were instructed to submit all pretrial order documents to this Court on October 4, 1996 for a nonjury trial. As this Court conducts nonjury trials with direct evidence submitted by affidavit, the parties' documents included such evidence. Plaintiff included in its papers an amendment to the January 1995 assignment executed on October 4, 1996 which states that in the January 1995 assignments the assignors "intended to and did also transfer any and all claims or causes of action for infringement thereof existing prior to the date of execution." Defendant contends that the January 1995 assignments did not transfer claims or causes of action, and the October 4, 1996 amendment was too late to cure this defect in standing.

 Plaintiff and defendant both sell boxer shorts to retail stores in the United States. Plaintiff sells to upscale department and specialty stores such as Saks Fifth Avenue. Defendant sells to retailers at the lower end of the market, such as Wal-Mart and Filene's Basement.

 Plaintiff took the patterns designed by the original authors and gave them to a manufacturing company in China to produce the boxer shorts. Plaintiff then sold these boxer shorts during the 1993 and 1994 Christmas season to high-end retailers. The boxer shorts were retailed for $ 20-25.

 In mid-1994, defendant travelled to Asia where he purchased boxer shorts with several different Christmas designs -- including boxer shorts with the two designs at issue in this case -- from the same Chinese factory that manufactures plaintiff's boxer shorts. In August 1994, defendant imported these boxer shorts on lesser quality fabric than is used by the plaintiff for its product and sold them to its customers, retail stores such as Wal-Mart. The boxer shorts retailed for $ 6-9 a pair prior to Christmas and for considerably less in January.

 When plaintiff's customers discovered that boxer shorts with the same patterns but of lower-quality fabric were being sold in low-end department stores, its customers refused to purchase any more boxer shorts with the two designs.

 Although neither party breaks down how many pairs were sold before and after January 1995, *fn1" in a conference held by this Court on October 18, 1996, both parties agreed that the vast majority of sales took place prior to January 1995. Therefore, whether or not the October 4, 1996 amendments are effective is central to the disposition of this lawsuit.


 To bring a claim for copyright infringement, a plaintiff must show that it is the owner of a valid copyright in the work allegedly infringed. Lipton v. Nature Co., 71 F.3d 464, 469 (2nd Cir. 1995). The owner of the copyright can be the author or her assignee. Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 195 (2nd Cir. 1985).

 The general rule is that for infringements that occur prior to the assignment, it is the assignor and not the assignee who has standing to sue for that infringement. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 980 (2nd Cir. 1991). An assignment may confer the right to a claim for prior infringement, but only if that right is explicitly transferred. In ABKCO, a ...

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