The opinion of the court was delivered by: SCHEINDLIN
Shira A. Scheindlin, U.S.D.J.:
Appearing before me for the second time in four months, plaintiffs Eve of Milady and Milady Bridal, Inc. seek a second 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 they have not unlawfully copied plaintiffs' lace designs and alternatively that plaintiffs' delay in seeking injunctive relief warrants denying the motion. For the reasons stated below, plaintiffs' motion is granted.
The facts and procedural history of this case prior to this motion were set forth in the March 18, 1997 Opinion and Order, and I need not repeat them here. See Eve of Milady v. Impression Bridal, Inc., 957 F. Supp. 484, 486-87 (S.D.N.Y. 1997).
On April 2, 1997, defendants' counsel informed the Court that defendants had complied with the March 18 Opinion and Order, and were no longer displaying, distributing or selling bridal dresses with the infringing lace designs. See Plaintiffs' Memorandum in Support of Motion for Preliminary Injunction ("Plaintiffs' Memo."), Ex. C at 4-5 (Transcript of April 2, 1997 Conference). At that time, I directed defendants to make their allegedly revised dresses available to plaintiffs, and to send plaintiffs an actual sample of the allegedly revised lace designs. See id. at 12. On April 7, 1997, Eve Muscio (President of Eve of Milady, Inc.) and counsel Robert Faber viewed the allegedly revised lace designs at a bridal dress show in New York, but were not permitted to take photographs. Defendants did not send photographs of the allegedly revised lace designs to plaintiffs until May 21, 1997. See Plaintiffs' Memo, Ex. E (Letter of Sharon P. Carlstedt, local counsel to defendants, to Robert Faber, plaintiffs' counsel, dated May 21, 1997). Plaintiffs immediately responded by sending a "cease-and-desist" letter with regard to four of their lace designs to defendants' counsel on the same day. See id., Ex. F. Plaintiffs' final registration of the four lace designs was returned on June 16, 1997 and they moved for preliminary relief two days later.
II. Applicable Legal Standards
A. Standards for Preliminary Injunction Pursuant to Rule 65
I have already discussed the standards for preliminary injunctive relief of the type plaintiffs seek here in the March 18, 1997 Opinion and Order, and will only briefly review them here. "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, 984 (2d Cir. 1997); Laureyssens v. Idea Group, Inc., 964 F.2d 131, 135-36 (2d Cir. 1992).
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. 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. 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 elements . . . the observer's inspection must be more 'discerning,' ignoring those aspects of a work that are unprotectible in making the comparison."). See also Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 765-66 (2d Cir. 1991). Rather, the court must compare only the protected portions of the design to determine whether infringement has occurred. See Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1003 (2d Cir. 1995).