"delay in raising the infringement question in the courts, caused in part by their attempts to reach an out-of-court compromise solution to a difficult and complex problem, should be commended rather than condemned").
For the reasons set forth above, I find that plaintiffs have demonstrated both irreparable harm and a likelihood of success on the merits with respect to their copyright infringement claim. Therefore, a preliminary injunction is an appropriate remedy in this case.
V. Plaintiffs' Remedy
Plaintiffs request that the Court order a general recall of each of defendants' knock-off dresses, and an order enjoining the filling of any orders for bridal dresses based on defendants' use of plaintiffs' designs. Plaintiffs' requested recall order would require Impression to contact its customers and the ultimate purchasers to recall all bridal dresses which utilize plaintiffs' copyrighted lace designs, as well as all advertisements, brochures or catalogs displaying such dresses. An injunction that prohibited defendants from filling orders would prevent defendants from delivering their knock-off dresses to consumers (both retail stores and the ultimate purchasers) who had already ordered, and perhaps paid for, those dresses. See Second Amended Complaint at pp. 13-14, PP B, C, D, E, K, J.
I am not convinced that a recall order would more effectively cure the harm caused by the sales of those dresses than a civil damages award. See JSG Trading Corp. v. Tray-Wrap, Inc., 917 F.2d 75, 79 (2d Cir. 1990) ("Where money damages are adequate compensation a preliminary injunction should not issue"). For consumers who have purchased dresses but have not yet been married, such an order would be a source of immediate prejudice to the brides who had planned to wear the defendants' dresses at their weddings. While the brides might be able to purchase the identical dress from plaintiffs, it is not clear that this could be accomplished in time for the wedding. Nor would a recall order cause less prejudice to consumers of infringing dresses who have already worn their wedding dresses, for a bridal gown becomes the heirloom of the bride, evoking both fond memories of her wedding day and the hope that relatives or future offspring will wear it again.
The principles of equity cannot support such a drastic penalty against bona fide wedding dress purchasers simply because of the dress manufacturers' unlawful conduct. See, e.g., Hecht Co. v. Bowles, 321 U.S. 321, 329-30, 88 L. Ed. 754, 64 S. Ct. 587 (1944) ("The qualities of mercy and practicality have made equity the instrument for nice adjustment and reconciliation between the public interest and private needs as well as between competing private claims"); Virginian Ry. Co. v. System Federation No. 40, 300 U.S. 515, 552, 81 L. Ed. 789, 57 S. Ct. 592 (1937) ("Courts of equity may, and frequently do, go farther both to give and withhold relief in furtherance of the public interest than they are accustomed to go when only private interests are involved"). For these reasons, I deny plaintiffs' request for a recall order and for an order enjoining defendants from filling orders for infringing dresses with regard to those orders placed by ultimate purchasers.
Orders placed by retailers, however, must be distinguished from those placed by ultimate consumers. Whereas, for reasons explained above, the latter category of orders may not be enjoined without causing prejudice to the brides who expect to wear defendants' dresses, the former category may be enjoined without causing the same prejudice to the retailers who expected to carry defendants' dresses. I therefore grant plaintiffs' motion with regard to filling orders made by retail stores only.
Plaintiffs have also demonstrated that they are entitled to an order preliminarily enjoining defendants from any future infringement of plaintiffs' copyrighted designs. It is accordingly
ORDERED that, as of March 18, 1997, until final decision of plaintiffs' claims, defendants, including their agents, servants, and employees shall be restrained pursuant to Fed. R. Civ. P. 65(a) from:
(a) displaying or otherwise using plaintiffs' copyrighted lace designs in any way in connection with any advertising, display, solicitation of sales, promotion or distribution of defendants' bridal dresses;
(b) manufacturing, having manufactured and selling bridal dresses, including defendants' dress style Nos. 9669, 9670, 9671, 9672 and 9673 (hereinafter referred to collectively as "defendants' bridal dresses"), which are substantially similar to plaintiffs' bridal dresses and incorporate plaintiffs' copyrighted lace designs;
(c) copying, manufacturing, having manufactured or selling bridal dresses which include exact or substantially similar copies of any of the five lace designs designated as plaintiffs' Nos. V364, V431, V301, V444 and V358 (hereinafter referred to collectively as "copyrighted lace designs"), which are incorporated into plaintiffs' dress style Nos. 1222, 1223, 5078, 1224 and 5086 (hereinafter referred to collectively as "plaintiffs' bridal dresses"), respectively; and
(d) copying, manufacturing, having manufactured, or selling exact or substantially similar copies of any of plaintiffs' copyrighted lace designs.
(e) filling orders for defendants' bridal dresses that incorporate any of plaintiffs' copyrighted lace designs other than (i) those orders placed by ultimate consumers, or (ii) those orders placed by retail stores on behalf of individual ultimate consumers.
It is additionally ORDERED that, pursuant to Fed. R. Civ. P. 65(c) and 65.1, plaintiffs shall issue a bond in the amount of $ 75,000 for the payment of such costs and damages as may be incurred or suffered by any party who is found to have been wrongfully enjoined or restrained.
Shira A. Scheindlin
Dated: New York, New York
March 18, 1997