Thomas Wilson & Co. v. Irving J. Dorfman Co.

• Decision Date: 16 October 1970
• Docket Number: No. 48,Docket 34703.,48
• Citation: 433 F.2d 409
• Court: U.S. Court of Appeals — Second Circuit
• Parties: THOMAS WILSON & COMPANY, Inc., Plaintiff-Appellee, v. IRVING J. DORFMAN COMPANY, Inc., Defendant-Appellant.

433 F.2d 409 (1970)

THOMAS WILSON & COMPANY, Inc., Plaintiff-Appellee, v. IRVING J. DORFMAN COMPANY, Inc., Defendant-Appellant.

No. 48, Docket 34703.

United States Court of Appeals, Second Circuit.

Argued September 23, 1970.

Decided October 16, 1970.

Armand E. Lackenbach, New York City (Lackenbach & Lackenbach, New York City, on the brief), for defendant-appellant.

Alan Latman, New York City (Cowan, Liebowitz & Latman, Arthur J. Greenbaum, Martin J. Bluestein, New York City, on the brief), for plaintiff-appellee.

Before LUMBARD, Chief Judge and ANDERSON and FEINBERG, Circuit Judges.

FEINBERG, Circuit Judge:

After a non-jury trial of this copyright infringement action in the United States District Court for the Southern District of New York before Harold R. Tyler, Jr., J., Thomas Wilson & Company, Inc. obtained injunctive relief against Irving J. Dorfman Company, Inc., and a damage award of $84,211.54. Dorfman claims on appeal that the trial judge erred both in holding it liable and in computing damages. For reasons given below, we reject these arguments and affirm.

Plaintiff Wilson is a manufacturer of lace for use in ladies' lingerie. Defendant Dorfman sells the same product, although it is a jobber, engaging contractors to make the goods it sells. In 1964, plaintiff obtained a copyright on a pansy lace design first embodied in an elastic "spandex" fiber. The next year, plaintiff secured a second copyright on an adaptation of this design in a rigid nylon fiber. This nylon pattern was purchased in substantial quantities by a single customer, The Warner Brothers Company. Not long after plaintiff began selling lace of this design to Warner, the latter's Purchasing Director suggested to defendant's vice president that it produce a lace "which would have the look" of plaintiff's design, and gave defendant a sample of plaintiff's lace from which to work. Defendant was asked to produce the lace on a so-called "Raschel" lace machine, a cheaper method than using the "Leavers" type machine plaintiff used. Defendant complied with the request, obtaining a contractor which produced for it what Judge Tyler called "a simply marvelous job in making * * * a very close copy of the plaintiff's" design. Warner apparently agreed with this characterization, for it purchased from Dorfman 205,394 yards of the copy of plaintiff's lace at a total price of $275,366. These sales are the subject of the lawsuit.

The case, therefore, is an unusual one. There is no question of access; the fact of copying is now clear. Although the computation of damages is attacked on appeal, we do not have the more obvious problems on damage. Plaintiff's lost sales and defendant's infringing sales coincide. Plaintiff sold its design exclusively to Warner once it began sell-to it, and similarly defendant sold its infringing pattern only to Warner. Therefore, it is plain that what Warner purchased from defendant, Warner would have bought from plaintiff had defendant not infringed. However, there are other damage questions raised before us as well as fundamental issues going to the validity of the copyrights and the conduct of the trial. To the latter we now turn.

I.

Defendant claims that either or both of plaintiff's copyrights are invalid for a number of reasons, principally lack of creativity and defective notice of copyright. As to the former concept, neither the Constitution nor the Copyright Act refers to originality in the creative sense. 17 U.S.C. § 4 provides that:

The works for which copyright may be secured * * * shall include all the writings of an author.

This spare, yet inclusive, language tracks the constitutional provision, Article I, section 8. 17 U.S.C. § 5 lists some of the classes of work that are embodied within the flexible concept of "writings." Among them are "works of art, models or designs for works of art,"¹ the category in which copyright was claimed and obtained in this case. Therefore, in sharp contrast to a patent, cf. 35 U.S.C. §§ 101, 103, the requirement of originality in the creative sense does not appear in the statute.

Moreover, the required creativity for copyright is modest at best. It has been variously described as "little more than a prohibition of actual copying"² or something more than a "merely trivial" variation,³ or "enough" if it be the author's own, "no matter how poor artistically." Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 103 (2d Cir. 1951). Plaintiff's pansy design was created by its own staff. The configuration of the design, including such details as petals and leaves, required an appreciable amount of creative skill and judgment. Copyright protection for floral design is not unknown. See H. M. Kolbe Co. v. Armgus Textile Co., 279 F.2d 555 (2d Cir. 1960), 315 F.2d 70 (2d Cir. 1963); Peter Pan Fabrics, Inc. v. Candy Frocks, Inc., 187 F.Supp. 334 (S.D.N.Y. 1960); cf. Prestige Floral, S.A. v. California Flower Co., 201 F.Supp. 287, 291 (S.D.N.Y.1962). While plaintiff's lace design is not what the phrase "work of art" ordinarily calls to mind, it possesses more than the "faint trace" of originality required. See Dan Kasoff, Inc. v. Novelty Jewelry Co., 309 F.2d 745, 746 (2d Cir. 1962).⁴

Defendant also offers other reasons why plaintiff should be barred from enforcing its copyrights, principally plaintiff's alleged failure to comply with the notice provisions of 17 U.S.C. § 10. As to that, defendant makes two arguments in this court: first, that plaintiff distributed significant amounts of lace without any copyright notice at all, and second, that the notice on some lace was insufficient. As to the former claim, Judge Tyler flatly ruled against defendant, and the judge's finding was not clearly erroneous. As to the latter, relying on H. M. Kolbe Co. v. Armgus Textile Co., supra, defendant tells us that a single copyright notice sticker for a bolt of 125 yards of the lace design was insufficient. Assuming arguendo that to be so, we do not know whether plaintiff sold its lace design in that way; certainly the judge made no such finding. At trial, plaintiff proved ownership of a validly issued copyright and defendant's copying, which alone established a prima facie case of infringement under the statute. Stuff v. E. C. Publications, Inc., 342 F.2d 143 (2d Cir.), cert. denied, 382 U.S. 822, 86 S.Ct. 50, 15 L.Ed.2d 68 (1965). Plaintiff also introduced evidence showing prima facie compliance with the notice requirements of the copyright law. Thereafter, the burden of establishing that plaintiff labelled and shipped its lace with insufficient notice rested on defendant. Defendant offered little evidence on this precise issue and failed to meet that burden, apparently because it did not press the point before Judge Tyler. Indeed, plaintiff's attempt early in the case to amplify the record with regard to its compliance with the notice provisions was stopped by the judge after defendant's objection, apparently on the theory that it was not yet relevant to a defense "real or possible." Under these circumstances, defendant should not be able to raise the point here.⁵ Therefore, it is unnecessary to consider the substantial questions of notice discussed in the two Kolbe opinions⁶ and in Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). See Ehrlich, Copyright of Textile Designs — Clarity and Confusion in the Second Circuit, 59 Mich.L.Rev. 1043 (1961).

Defendant also claims that the applications for copyright were deficient because in both applications the president of plaintiff corporation instead of the corporation was named as the "author,"⁷ and the application for the second copyright failed to refer to the first. The former error was minor, was made in good faith, and could not have affected the action taken by the Copyright Office. Pantone, Inc. v. A. I. Friedman, Inc., 294 F.Supp. 545, 551 (S.D.N.Y. 1968). The second was potentially more serious since it is arguable that if the material for which successive copyrights are sought is identical, this is an attempt to obtain an unjustifiable extension of copyright monopoly. However, there is no indication that plaintiff so intended here; the omission was clearly innocent. The great bulk of defendant's infringing sales came after it was served with plaintiff's complaint, which certainly put it on notice at least of the second copyright, which covered the same design as the first, although for a different material. Under these circumstances, we do not believe that plaintiff should be denied the protection of its copyright. Cf. Davis v. DuPont de Nemours & Co., 240 F.Supp. 612, 624-626 (S.D.N.Y.1965); Wrench v. Universal Pictures, Inc., 104 F.Supp. 374, 379 (S.D.N.Y.1952).

Defendant also argues that Judge Tyler improperly allowed plaintiff to amend the pleadings and the pre-trial order to include a claim of infringement of the first copyright, which covered the spandex version of the design. Defendant claims prejudice because of plaintiff's failure to sue originally on the first copyright as well as on the second. The alleged "prejudice" is that defendant "may well have been advised by its counsel" to stop manufacturing the infringing lace, apparently because defendant "had depended upon such first-issued copyright as invalidating the second-issued copyright."⁸ However, we doubt that the possibility of guessing wrong as to the validity of a known copyright is relevant "prejudice." In any event, the judge's ruling allowing the amendments was clearly within his discretion. Moreover, at trial defendant's counsel explicitly withdrew his earlier objection. We have considered defendant's other arguments on the liability phase of the case and consider them without merit.

II.

We turn now to damages, which are attacked on a number of counts. As indicated, the judge awarded plaintiff $84,211.54, together with costs, but denied attorneys fees. This figure was the total of two items: $22,593.34, representing the lost profit...