I find that plaintiffs have met their burden of showing substantial similarities between the protectible elements of their lace designs and each of the defendants' "revised" lace designs. As with the bridal dresses I analyzed four months ago, defendants' revised designs "bear a striking similarity to the copyrighted lace designs featured in plaintiffs' bridal dresses." Impression Bridal, Inc., 957 F. Supp. at 490. Slight design differences in the lace patterns may be identified when the samples are placed side by side. Were I merely ruling on the issue of whether defendants' lace patterns themselves are substantially similar to plaintiffs', I would conclude that only defendants' style number 671 is substantially similar to plaintiffs' copyrighted work. The patterns of defendants' lace style numbers 669, 670 and 673 are not so similar to the corresponding style numbers of plaintiffs as to constitute "substantially similar" works.
But when viewed on the dresses themselves, the slight discrepancies between the lace patterns are eclipsed by the almost total likeness in the arrangement and placement of the designs on the dresses, which as stated earlier are elements of the plaintiffs' protectible work. Even a quick visual inspection of the bridal dresses shows that the arrangement and placement of lace on the arms, neck, shoulders, waist and hem line of defendants' dresses almost exactly replicates the plaintiffs' arrangement and placement of their lace designs. I therefore find plaintiffs have met their burden of establishing substantial similarities between their lace designs and those of defendants.
C. Plaintiffs' Alleged Delay in Filing Suit
Before defendants sent plaintiffs the photographs of their allegedly revised lace designs, plaintiffs' only evidence to support claims of copyright infringement was the expert opinion of Eve Muscio, who viewed the defendants' revised dresses on April 7. At the April 2, 1997 conference, I noted that plaintiffs would have difficulty meeting the high standard of Rule 65 if their claims rested only on an expert's determination that defendants' revised lace designs were "substantially similar" to those of plaintiffs. I therefore directed defendants to send actual samples of the revised lace designs to plaintiffs.
Defendants have not explained why they waited until May 21 to send plaintiffs samples or photographs of the revised lace designs. When defendants finally did so, plaintiffs responded with alacrity by sending a cease-and-desist letter to defendants the same day, and by filing this motion two days after receiving the final registration of the four lace designs allegedly infringed by defendants. The only real delay appears to have been caused by defendants' failure to comply with my instruction to send plaintiffs a sample of the revised lace designs. I therefore reject defendants' argument that plaintiffs have delayed too long to warrant a grant of equitable relief.
IV. Plaintiffs' Remedy
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. As in my previous Order, I will not issue a general recall order, but will grant plaintiffs' motion for a recall order with regard to orders placed by retailers for their own behalf (as opposed to orders placed by retailers on behalf of ultimate consumers). See Impression Bridal, Inc., 957 F. Supp. at 491. It is accordingly
ORDERED that the March 18, 1997 Order remains in effect, and
ORDERED that, as of July 8, 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 which are substantially similar to plaintiffs' bridal dresses, including dress style numbers 669, 670, 671 and 673, 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 four lace designs designated as plaintiffs' numbers 364, 444, 301 and 431 (hereinafter referred to collectively as "copyrighted lace designs";
(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 already placed by ultimate consumers, or (ii) those orders already 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 $ 25,000
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.
The March 18 Order restrained defendants from copying, manufacturing, displaying, or otherwise using exact or substantially similar copies of plaintiffs' copyrighted lace designs. It is now evident that defendants failed to comply with the letter or the spirit of that Order, preferring instead to require plaintiffs to move for a second preliminary injunction and risking being held in contempt of court for failure to abide by the March 18 Order. Such conduct is both unwise and unfair: unwise because the sanctions for civil contempt are severe, and unfair because repetitive preliminary injunction motions unduly tax judicial resources. Both parties would be better served by resolving their differences out of court, or by swiftly proceeding to trial.
A pretrial conference is scheduled for 4:30 P.M. on August 5, 1997.
Shira A. Scheindlin
Dated: New York, New York
July 17, 1997