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EVE OF MILADY & MILADY BRIDALS, INC. v. IMPRESSION

March 18, 1997

EVE OF MILADY and MILADY BRIDALS, INC., Plaintiffs, against IMPRESSION BRIDAL, INC., and NICK YEH, Defendants.


The opinion of the court was delivered by: SCHEINDLIN

 Shira A. Scheindlin, U.S.D.J.:

 Plaintiffs Eve of Milady and Milady Bridals, Inc. *fn1" seek a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure restraining defendants from infringing their copyrights and trademarks, and engaging in unfair competition. Defendants argue, inter alia, that plaintiffs' delay in seeking injunctive relief warrants denying the motion. For the reasons stated below, plaintiffs' application is partially granted.

 I. Procedural Background

 Plaintiffs filed this action on November 25, 1996. Shortly thereafter, on December 10, 1996, plaintiffs amended the Complaint. With leave of Court, plaintiffs filed a Second Amended Complaint on February 19, 1997. In their Second Amended Complaint, plaintiffs assert two causes of action. In the first cause of action, plaintiffs interpose claims of false advertising and false designation of origin, pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. § 25(a); unfair competition, pursuant to the common law of New York; and violations of state and federal anti-dilution laws pursuant to New York General Business Law § 368-d and Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(c). In the second cause of action, plaintiffs interpose five counts of copyright infringement in violation of 17 U.S.C. §§ 101 to 120.

 Plaintiffs have now moved for two forms of equitable relief. First, plaintiffs seek an Order enjoining defendants from:

 (a) representing that defendants' bridal dresses or other products are plaintiffs' products;

 (b) displaying or otherwise using plaintiffs' proprietary marks in any way in connection with any advertising, display, solicitation of sales, promotion or distribution of defendants' bridal dresses;

 (c) 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;

 (d) 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;

 (f) filling orders for bridal dresses or other products which were based on defendants' display or other use of plaintiffs' bridal dresses incorporating plaintiffs' copyrighted lace designs.

 Second, plaintiffs request an order from the Court requiring defendants to contact their customers and to recall all of defendants' bridal dresses (the "Recall Order").

 Various affidavits, declarations and exhibits are presently before me. The parties have jointly waived an oral argument and evidentiary hearing on plaintiffs' motion for a preliminary injunction and on defendants' response thereto, and ask that I render my decision based solely upon documentary evidence. See Letter to Court from C. Steven McDaniel, Counsel for Defendants, received March 5, 1997 (confirming stipulation by parties to waive oral argument and hearing during telephone conference with the Court on February 26, 1997).

 II. Applicable Legal Standards

 A. Standards for Preliminary Injunction Pursuant to Rule 65

 "Because of the great potential for harm which may occur from the issuance of a preliminary injunction, the party seeking the injunction must sustain a heavy burden." Ringling Brothers-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp., 937 F. Supp. 204, 207 (S.D.N.Y. 1996). The weight of this burden is well-settled. The party seeking such relief must demonstrate (1) irreparable injury and (2) a likelihood of success on the merits or a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party's favor. See Maryland Casualty Company v. Realty Advisory Board on Labor Relations, 107 F.3d 979, No. 96-7809, 1997 WL 90781, at *6 (2d Cir. Jan. 31, 1997); Laureyssens v. Idea Group, Inc., 964 F.2d 131, 135-36 (2d Cir. 1992). Where a plaintiff seeks a preliminary injunction and asserts multiple claims upon which the relief may be granted, the plaintiff need only establish a likelihood of success on the merits on one of the claims. See Girls Clubs of America, Inc. v. Boys Club of America, Inc., 683 F. Supp. 50, 52 (S.D.N.Y.), aff'd, 859 F.2d 148 (2d Cir. 1988). Because I find plaintiffs' copyright infringement claims provide a basis for granting a preliminary injunction, I will not address their other claims.

 B. Standards for Claim of Copyright Infringement

 "In order to establish a claim for copyright infringement, a plaintiff must show ownership of a valid copyright and the defendant's infringement by unauthorized copying." Laureyssens, 964 F.2d at 139. In copyright law, it is axiomatic that "actual copying can be inferred from the defendant's access to the copyrighted work and substantial similarity between the copyrighted work and the alleged infringement." Id. Thus, a two-pronged analysis is used to determine whether a defendant has infringed a copyright. First, a plaintiff must "show that [her] work was actually copied by proving 'access and substantial similarity between the works.'" Id. See also Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, 476 U.S. 1159, 90 L. Ed. 2d 721, 106 S. Ct. 2278 (1986). Then, it must be shown that this copying constituted an "improper" or "unlawful" appropriation through proof that "substantial similarities relate to protectible material." Laureyssens, 964 F.2d at 139-40; Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946).

 To determine whether there is a substantial similarity between the works of the plaintiffs and those of the defendants, the finder of fact must ascertain whether "the ordinary observer, unless she set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (L. Hand, J.). See also Arica Institute, Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992) (applying same standard and quoting Peter Pan Fabrics, Inc.); Churchill Livingstone, Inc. v. Williams & Wilkins et al., 949 F. Supp. 1045, 1052 (S.D.N.Y. 1996) (same). In cases involving a design containing both protectible and unprotectible elements, however, the finder of fact may not rely on overall impressions to determine whether unlawful appropriation has occurred. See Laureyssens, 964 F.2d at 141 ("However, where a design contains both protectible and unprotectible ...


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