309 F.Supp. 21 (S.D.N.Y. 1969), C.A. 1833-69, Irving J. Dorfman Co. v. Borlan Industries, Inc.

Docket Nº:C.A. 1833-69
Citation:309 F.Supp. 21
Party Name:Irving J. Dorfman Co. v. Borlan Industries, Inc.
Case Date:September 04, 1969
Court:United States District Courts, 2nd Circuit, Southern District of New York
 
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Page 21

309 F.Supp. 21 (S.D.N.Y. 1969)

165 U.S.P.Q. 539

IRVING J. DORFMAN CO., Inc., Plaintiff,

v.

BORLAN INDUSTRIES, INC., Defendant.

C.A. No. 1833-69.

United States District Court, S.D. New York

Sept. 4, 1969

Page 22

Lackenbach & Lackenbach, New York City, for plaintiff.

Kaufman, Taylor, Kimmel & Miller, New York City, for defendant.

OPINION

LASKER, District Judge.

This is a motion for a preliminary injunction to enjoin an alleged infringement of a copyright covering a lace design. Jurisdiction is vested in this court by 17 U.S.C. § 112 and 28 U.S.C. § 1338.

Plaintiff, Irving J. Dorfman, Inc. (hereinafter 'Dorfman'), a New York corporation, is a dealer in laces, the laces being manufactured for it by others Defendant, Borlan Industries, Inc. (hereinafter 'Borlan'), also a New York corporation, is a manufacturer or converter of laces. The two firms are in direct competition with each other, as they originate lace designs, purchase lace designs from others, seek to copyright these designs whenever possible, and sell to the same group of purchasers.

Plaintiff alleges that its 'Design #6726' (hereinafter '6726') was created for it by Glamour Lace & Fabrics, Inc. and its employee Gustave Gerstle1 prior to November 1, 1964, the date of the first publication of '6726' by plaintiff. Glamour Lace & Fabrics, Inc. had obtained a copyright for its 'Design #1966' on October 2, 1961, and Mr. Gerstle states that '6726' as produced for Dorfman was based upon '1966,' but, in his opinion, 'they are positively not identical.'2 Dorfman applied for copyright registration for '6726' on February

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10, 1969, and Copyright No. Gp 61795 was granted on April 4, 1969, 'within less than two weeks after it (plaintiff) secured a sample of defendant's infringing lace * * *'3 Plaintiff filed its complaint in this action on April 30, 1969.

Borlan counters the allegation of copyright infringement with varied defenses. It first states that its 'Design #1720' (hereinafter '1720'), which is exactly the same as plaintiff's '6726', has been manufactured and sold since 1962, thus preceding the publication date of plaintiff's '6726.'4 It further claims that Glamour Lace & Fabrics' '1966', registered on October 2, 1961, is identical to plaintiff's '6726,' and therefore plaintiff should not have obtained a valid copyright for its '6726'.5 As a third defense, Borlan alleges that, even if the copyright was obtained for an original design, Dorfman did not protect the copyright by affixing to the copyrighted material the notice required by 17 U.S.C. § 106 and 17 U.S.C. § 19. Borlan's final defense is that the pictorial representation of Dorfman's '6726' on a brassiere package, without copyright notice, was a dedication of the design to the public.

It is now settled that a textile design is a proper subject for copyright protection under 17 U.S.C. § 5(g) and § 5(k). Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954); Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc., 169 F.Supp. 142 (S.D.N.Y., 1959); Peter Pan Fabrics, Inc. v. Candy Frocks, Inc., 187 F.Supp. 334 (S.D.N.Y., 1960); 37 CFR 202.10(b). Glamour Lace & Fabrics, Inc. created '6726' for Dorfman, at Dorfman's request. Gerstle, an officer and employee of Glamour, states that '6726' was based on Glamour's 'Design #1966',7 which was registered in October 1961, but never published. The 'work for hire doctrine,' as enunciated by the Court of Appeals for the Second Circuit in Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 567 (2d Cir., 1966), declares that when an employee produces work 'at the instance and expense of his employer * * * the employer has been presumed to have the copyright.'8 The court observed, in terms applicable to the instant case:

'We see no sound reason why these same principles are not applicable when the parties bear the relationship of employer and independent contractor.' Id. at 568.

The presumption of copyright ownership by the employer governs unless the contrary intention is shown. Nimmer on Copyright, 244 (1964). No contrary intent has been alluded to by Borlan in the instant action. Given this situation, Dorfman could properly have registered the design under 17 U.S.C.§ 9 as an 'author.'9 Thus, for the purposes of this motion, we will assume arguendo that plaintiff had a valid copyright when it made its first publication on or about November 1, 1964. The question which next arises, therefore, is whether Dorfman adequately protected this copyright.

Borlan claims that when Dorfman allowed a photograph of '6726'...

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