United Merchants & Mfrs., Inc. v. K. Gimbel Accessories, Inc.
| Decision Date | 10 December 1968 |
| Docket Number | No. 68 Civ. 3455.,68 Civ. 3455. |
| Citation | 294 F. Supp. 151 |
| Parties | UNITED MERCHANTS AND MANUFACTURERS, INC. and Pattern Rights, Inc., Plaintiffs, v. K. GIMBEL ACCESSORIES, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
Stroock & Stroock & Lavan, New York City, for plaintiffs.
Golenbock & Barell, New York City, for defendant.
Plaintiff United Merchants & Manufacturers, Inc. ("United"), a converter of textiles from raw uncolored fabrics into colored design-bearing finished fabrics, and its wholly-owned subsidiary, Pattern Rights, Inc., seek a preliminary injunction restraining defendant, an importer of fabric-covered luggage from infringing plaintiffs' copyright in certain patterns and designs. The essential undisputed facts are as follows:
United is a Delaware corporation having its principal place of business in New York City. For many years it has been engaged through its Cohn-Hall-Marx and Riverdale Divisions in the business of processing raw "gray" goods into finished fabrics bearing colored designs which it sells to manufacturers, jobbers, department stores and others for various uses. By careful selection and acquisition of ownership of unique designs and design colorations for use in this process from leading artists, stylists and designers employed by it or by outstanding design studios, it has developed an outstanding reputation in its field.
Through Pattern Rights, Inc. plaintiffs are the owners of the following original designs imprinted on textiles converted by United which were registered with the United States Copyright Office on the dates indicated for which registration numbers were issued as shown:
Class H
Name Date Registered Registration No
Garden of Eden (#372) September 26, 1963 H 22750
Morocco (#357) January 13, 1964 H 24157
Troy (#609) August 2, 1966 H 31602
Caribe, Pattern #184 June 28, 1961 H 14087
Vibrato, Pattern #R-3348 April 20, 1967 H 33281
Crescendo, Pattern #R-3350 April 20, 1967 H 33283
Copies of fabrics bearing each of the above designs have been furnished to the Court. Each is imprinted on the edge or selvage with the legend "© Pattern Rights, Inc.", the name of the design and the type of finish. Each of the copyrighted designs appears to present a unique and original arrangement of figures, lines and shapes in varying sizes, patterns and colors. In some cases the arrangement is essentially floral in character, with variations in the sizes, shapes and patterns of the flowers and backgrounds presented, whereas in others the dominant motif is basically an abstract consisting of a series of original combinations of circles, bands, colors and lines.
In March and April 1967 defendant, an importer of fabric-covered bags which it arranges to have manufactured for it in Japan, purchased samples of fabrics bearing plaintiffs' foregoing designs on the express condition that it would not copy or reproduce them directly or indirectly. The sales agreement contained the following express provision:
The fabric samples purchased by the defendant contained the foregoing copyright notice along the edge of each sample. Although fabrics bearing the designs "Vibrato" and "Crescendo", ordered by defendant on April 17, 1967, were not registered with the Copyright Office until a later date, they bore the copyright notice required by § 10 of the Copyright Act.
After purchasing the foregoing fabric samples from United subject to the express restrictions noted, defendant used them in the manufacture in Japan of approximately 21,000 sets of fabric-covered luggage which it imported into the United States for sale and is now in the process of selling to department stores and other customers. Samples of each piece of such luggage alleged to infringe upon plaintiffs' copyrighted designs have been furnished to the Court for comparison purposes. Except for a strip along the bottom of each piece, and a narrow solid-colored plastic band around the edge, the bags (which range in size from approximately 10" × 16" × 4" to 20" × 14" × 4") are completely covered with a design fabric alleged to infringe upon one of plaintiffs' four copyrights.
There is some dispute between the parties as to when plaintiffs first discovered the sale of the alleged infringing designs, defendant contending that the discovery was made as early as March of this year and plaintiffs asserting that discovery was not made until a later date. In any event it is apparent that after the discovery plaintiffs were required to spend some time investigating the origin of the luggage before instituting suit in August 1968; and that thereafter protracted but unsuccessful settlement negotiations were conducted. Under the circumstances plaintiffs cannot be said to be guilty of laches or unwarranted delay in seeking injunctive relief.
This case is governed by principles established in Peter Pan Fabrics v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960), which has been followed more recently by Judge Levet in John Wolf Textiles Inc. v. Andris Fabrics, 139 U.S. P.Q. 365 (S.D.N.Y.1962), by Judge Tenney in United Merchants and Manufacturers, et al. v. Sutton, et al., 282 F.Supp. 588 (S.D.N.Y.1967), and by myself in United Merchants and Manufacturers, Inc. v. Sarne Co., 278 F.Supp....
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