280 F.2d 800 (2nd Cir. 1960), 213, Peter Pan Fabrics, Inc. v. Dixon Textile Corp.

Docket Nº:213, 25935.
Citation:280 F.2d 800, 125 U.S.P.Q. 39
Party Name:PETER PAN FABRICS, INC. and Henry Glass & Co., Plaintiffs-Appellants, v. DIXON TEXTILE CORPORATION, Defendant-Appellee.
Case Date:March 30, 1960
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit
 
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280 F.2d 800 (2nd Cir. 1960)

125 U.S.P.Q. 39

PETER PAN FABRICS, INC. and Henry Glass & Co., Plaintiffs-Appellants,

v.

DIXON TEXTILE CORPORATION, Defendant-Appellee.

Nos. 213, 25935.

United States Court of Appeals, Second Circuit.

March 30, 1960

Argued Feb. 11, 1960.

On Application for Hearing In Banc May 18, 1960.

proof the district judge would have been justified in denying summary judgment but had he reached the questions of notice and copying he might have been able by interrogation of counsel or otherwise to determine whether the issues were genuine or merely sham and the ground on which denial was based, lack of originality, was untenable, order denying summary judgment would be vacated and cause remanded for further consideration. Fed.Rules Civ.Proc. rule 56, 28 U.S.C.A.

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Bernard A. Helfat, Helfat & Helfat, New York City (J. Nathan Helfat, New York City, on the brief), for plaintiffs-appellants.

Harry Price, New York City (Samuel Jaffe, New York City, on the brief), for defendant-appellee.

Before MOORE, Circuit Judge, and SMITH and HERLANDS, District Judges.

J. JOSEPH SMITH, District Judge.

Plaintiffs sued for infringement of copyright on an ornamental design,

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known as "Byzantine" printed upon textiles. A preliminary injunction against copying was granted, and plaintiffs moved, with supporting affidavits, carriage petitioner could not transport permanent injunction against copying and reference to a master for determination of damages. Judge Levet denied summary judgment on the ground that the finding of originality in the order granting a preliminary injunction was not determinative and that the affidavit submitted in support of the motion is insufficient to dispose of this issue prior to trial. A motion for rehearing was denied without opinion.

Defendant-appellee contends that the orders denying summary judgment are not appealable because not final; appellant that they are appealable as orders denying injunctions. 28 U.S.C. § 1292(1). The matter is settled in this circuit in favor of appealability by Raylite Electric Corp. v. Noma Electric Corp., 2 Cir., 1948, 170 F.2d 914, Federal Glass Co. v. Loshin, 2 Cir., 1954, 217 F.2d 936, and United States v. New York N.H. & H.R.R. Co. et al. (Glenmore et al. v. Ahern et al.), 2 Cir., 276 F.2d 525, with which my brothers are in accord. Were the matter one of first instance in this circuit the writer would incline to the view that they are not appealable, for they are clearly interlocutory in nature, involving a pre-trial order as to issues to be tried. This is the view of the third circuit. Hook v. Hook & to the susceptibility test.' And 122; Morganstern Chemical Co. v. Schering Corp., 3 Cir., 1950, 181 F.2d 160; 6 Moore Federal Practice, 2nd Ed., p. 2321, and see dissenting opinion of Judge Clark in Federal Glass Co., v. Loshin, 2 Cir., 1954, 217 F.2d 936, 938, and the views of Judges Clark and Medina, Federal Glass Co. v. Loshin, 2 Cir., 1955, 224 F.2d 100, 101. We proceed to consideration of the merits.

Concededly, the finding on the issue of originality was not concluded by the ruling on the ex parte motion for preliminary injunction. However, when the motion for summary judgment, with accompanying affidavits, placed before the court a state of facts, which, uncontradicted in any material respect, required a finding of originality, trial of the issue was not required, and summary judgment should not have been denied on that ground. The plaintiffs had engaged a Parisian designer to design from rough sketches furnished him a design Byzantine in motif. This design plaintiffs registered as a reproduction of a work of art under 17 U.S.C. § 5(h), for which the Copyright Office issued Certificate H 7290. The design was printed on goods with the copyright notice repeated on the selvage every 19 inches, and the goods were sold to dress manufacturers. While the basis of the sketches appears to have been suggested by or perhaps taken faithfully from ancient art forms, their incorporation into a combined design by the Parisian designer is clearly sufficiently original to satisfy the originality requirement of the copyright law. See Alfred Bell & Co., Ltd. v. Catalda Fine Arts Inc., 2 Cir., 1951, 191 F.2d 99. (Mezzotint engravings of old masterpieces, paintings in the public domain, proper subjects of copyright.) Originality, not novelty, is the test. Fred Fisher, Inc. v. Dillingham, D.C.S.D.N.Y. 1924, 298 F. 145. There was no genuine issue as to any facts material to the question of originality.

Defendant contends that besides originality there were three other genuine factual issues raised by the pleadings and affidavits which were not reached by Judge Levet in view of his ruling on originality. These were failure to comply with the notice requirement of the copyright law, 17 U.S.C. § 10, whether the defendant in fact copied plaintiffs' design or developed a similar design independently, and damages. There appears to be no issue of fact as to the printing of the notice on the selvage, and its legal sufficiency has been upheld in Peter Pan Fabrics, Inc. v. Martin Weiner Co., 2 Cir., 274 F.2d 487, 490, in the absence of showing that notice could have been embodied in the design without impairing its market value. appreciably, the ripening process. other issues in view of his ruling on the issue of originality, no finding the fruit and would subject it to increased have been applied to the dresses or embodied in the design without impairing its market value.

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Since Judge Levet did not consider other issues in view of his ruling on the issue of originality, no finding was made as to whether notice could have been applied to the dresses or embodied in the design without impairing its market value. Publication under the Martin Weiner Corp. case, supra, is considered to have occurred on sale of the printed goods to the dress manufacturers, and notice at that time is to be held constructive notice to all dress manufacturers, provided the notice was sufficient. In that event, a copier acts at his peril if he takes the design from a finished dress. Such a result may well be considered necessary to carry out the Congressional intent to give copyright protection to reproductions on textiles of works of art. Weiner teaches that absence of notice is a defense, with the burden on the copyist to show it could have been embodied in the design without impairing its market value. 'In the case of a deliberate copyist, * * * the absence of 'notice' is a defence that the copyist must prove, and * * * the burden is on him to show that 'notice' could have been embodied in the design without impairing its market value.' L. Hand, J. in Peter Pan v. Martin Weiner. It does not appear likely that...

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