Irving J. Dorfman Co. v. Borlan Industries, Inc.

Decision Date04 September 1969
Docket NumberC. A. No. 1833-69.
Citation309 F. Supp. 21
PartiesIRVING J. DORFMAN CO., Inc., Plaintiff, v. BORLAN INDUSTRIES, INC., Defendant.
CourtU.S. District Court — Southern District of New York

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 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" to be placed on boxes containing brassieres (manufactured by Exquisite Form Industries, Inc.) without insisting upon the affixation of copyright notice, the design was abandoned to the public. This proposition is not sound. The court in Key West Hand Print Fabrics, Inc. v. Serbin, Inc., 269 F.Supp. 605 (S.D. Fla., 1965 — opinion of Chief Judge Dyer), held that a copyright mark was not required on a photograph of plaintiff's registered material. The court further held (at 610) that "plaintiff's `cooperation' did not require it to insist that the statutory mark be displayed in the photographs used by Life." Thus, even where the copyright holder actively participates in placing photographs of the registered material in print, the fact that he does not insist upon copyright notice will not vitiate an otherwise valid copyright. See also Modern Aids, Inc. v. R. H. Macy & Co., Inc., 264 F.2d 93, 94 (2d Cir., 1959), where the court stressed the importance of there being "no evidence whatever that the plaintiff was at fault for the absence of the notice in these instances and the defendant had the burden of proof upon the issue of invalidation."

Borlan's chief contention in this proceeding is that copyright notice was not affixed pursuant to 17 U.S.C. § 10. When the statutory notice is not affixed to an article which is then passed into the stream of commerce, the copyright holder abandons his rights under the copyright and the article may be freely copied by others. United Merchants and Manufacturers, Inc. v. Sarne Company, Inc., 278 F.Supp. 162 (E.D.N.Y., 1967). The threshold question is whether the copyright notice was affixed when the goods left plaintiff's factory, and it is not fatal if others later removed the required notice. Peter Pan Fabrics, Inc. v. Acadia Company, 173 F.Supp. 292, 304 (S.D.N.Y., 1959), aff'd sub nom. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir., 1960); Gerlach-Barklow Co. v. Morris & Bendien, Inc., 23 F.2d 159 (2d Cir., 1927); Key West Hand Print Fabrics, Inc. v. Serbin, Inc., supra. This is in accord with the view that notice requirements under 17 U.S.C. § 10 should be liberally construed. Uneeda Doll Co. v. Goldfarb Novelty Co., 373 F.2d 851, 854 (2d Cir., 1967), cert. den. 389 U.S. 801, 88 S.Ct. 9, 19 L.Ed.2d 56. The burden of proof on the question of non-affixation of copyright notice rests upon the defendant. Stuff v. E. C. Publications, Inc., 342 F.2d 143 (2d Cir., 1965); Modern Aids, Inc. v. R. H. Macy & Co., Inc., supra. Borlan supports this burden by the submission of an affidavit of Bernard Rashkin, a director of manufacturing, purchasing and research for Exquisite Form Industries, Inc.10 Mr. Rashkin states in his affidavit:

"To my knowledge and to the knowledge of those employed by Exquisite Form Industries, Inc. in production levels, the production deliveries of the bolts of lace received by us did not contain notice of copyright affixed to the fabric."

Defendant has also submitted the affidavit of Leonard Grinberg, Vice President of Borlan, which states that plaintiff did not affix the proper copyright notice, and

"I say that of my own knowledge because I have personally seen, in two separate factories, many bolts of plaintiff's lace marked as design #6276 but without any notice of copyright on the lace itself, the bolt or on the package or wrapper."

To counter the foregoing, plaintiff relies on the affidavit of its President, Irving J. Dorfman. In his affidavit Mr. Dorfman states that

"* * * it is a fixed policy and procedure of plaintiff to affix to the fabric or to the bolts or containers the appropriate copyright notice required by law."

He further states that Mr. Rashkin could not have seen the bolts of lace "6726" in the condition shipped by Dorfman, since the shipments to Exquisite Form Industries were delivered to Manila in the Philippines.

It should be noted that Rashkin is not a party to this lawsuit, and presumably disinterested in the final adjudication. Dorfman, on the other hand, is a principal. He submits copies of bills demonstrating the shipment of lace to the Philippines11, but the court is not informed as to what the total shipment from plaintiff to Exquisite Form was during the relevant period. Dorfman further states that Rashkin orally advised him that his former assertions by affidavit were mistaken, but he does not submit a supplemental affidavit by Rashkin setting forth the new information that allegedly came to Rashkin's attention in the interim. Nor does plaintiff submit any affidavits of other nonparties to the effect that proper copyright notice was affixed to plaintiff's lace or bolts.

Without expressing any views as to the ultimate merits of each party's position, the court notes that in the present state of the record there is a very real question as to whether the requisite copyright notice was affixed. This alone appears a sufficient reason for denying the severe remedy of an injunction pendente lite. Plaintiff does not contend that its case falls within the exemptions of Section 21 of the Copyright Laws,12 and the allowances made by that section are not applicable here.

* * *

The general prerequisites for the issuance of a preliminary injunction are a clear showing of probable success and possible irreparable injury to the plaintiff. Life Music, Inc. v. Wonderland Music Co., 241 F.Supp. 653 (S.D. N.Y., 1965); Societe Comptoir de L'Industrie etc. v....

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