558 F.2d 1090 (2nd Cir. 1977), 998, Novelty Textile Mills, Inc. v. Joan Fabrics Corp.

Docket Nº:998, Docket 77-7067.
Citation:558 F.2d 1090
Party Name:195 U.S.P.Q. 1 NOVELTY TEXTILE MILLS, INC., Plaintiff-Appellant, v. JOAN FABRICS CORPORATION, Defendant-Appellee.
Case Date:July 12, 1977
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 1090

558 F.2d 1090 (2nd Cir. 1977)

195 U.S.P.Q. 1

NOVELTY TEXTILE MILLS, INC., Plaintiff-Appellant,



No. 998, Docket 77-7067.

United States Court of Appeals, Second Circuit

July 12, 1977

Argued March 29, 1977.

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James K. Silberman, New York City (Blum, Moscovitz, Friedman & Kaplan, New York City, of counsel), for plaintiff-appellant.

Floyd A. Gibson, Charlotte, N. C. (Joell T. Turner and Bell, Seltzer, Park & Gibson, Charlotte, N. C., and Michael Malina, Ettie Ward and Kaye, Scholer, Fierman, Hays & Handler, New York City, of counsel), for defendant-appellee.

Before MANSFIELD and GURFEIN, Circuit Judges, and NEWMAN, District Judge. [*]

GURFEIN, Circuit Judge:

This is an appeal from an order of the District Court for the Southern District of New York (Werker, D. J.) denying plaintiff's motion for a preliminary injunction

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against the continued use by defendant of a fabric design which it allegedly copied from plaintiff's fabric design. The complaint charges copyright infringement under 17 U.S.C. §§ 101, 112 and 116 and seeks a permanent injunction, impoundment and destruction of the allegedly infringing copies, and damages. Jurisdiction is based on 28 U.S.C. § 1338(a).


The basic facts as found by the court below are not in dispute. Plaintiff Novelty Textile Mills, Inc. ("Novelty") and defendant Joan Fabrics Corporation ("Joan") both manufacture upholstery fabrics which they sell in competition with each other to furniture manufacturers. Novelty created Style 253 during the latter part of 1975 and copyrighted it. It was first displayed to the trade in January, 1976. The fabric sold well and was delivered to furniture manufacturers in commercial quantities beginning in March, 1976. Several manufacturers exhibited display models of their furniture, upholstered with Style 253 fabric, at a regional furniture trade market held in April, 1976 at High Point, North Carolina. At that time both the sales and design personnel of defendant Joan viewed plaintiff's Style 253 and learned that there was a substantial demand for this type of design, known as "bias" or "argyle" plaid, among its customers.

Joan's management thereafter determined that it too should offer a collection of bias plaid upholstery fabrics. Its designers were instructed to make such a collection and were told "to avoid any infringement of fabrics manufactured by others." Subsequently five bias plaid designs were made by its designers and used in the manufacture of Joan's fabrics.

After the introduction of these Joan fabric designs, the sales of Novelty's Style 253 declined precipitously. The president of Novelty testified that its continuing loss in sales amounted to approximately $11,000 per week. He attributed this loss to the introduction of the Joan designs.

Within two months Novelty instituted this lawsuit and moved for a preliminary injunction. The District Court after an evidentiary hearing, as noted, denied the motion. This appeal followed.


In order to prove infringement a plaintiff must show ownership of a valid copyright and copying by the defendant. See 2 M. Nimmer, Nimmer on Copyright § 141 at 611 (1976) ("Nimmer "). Novelty's ownership and the validity of its copyright are not disputed for the purpose of this motion. 1 This leaves the issue of whether Joan copied Novelty's design. Since direct evidence of copying is rarely, if ever, available, a plaintiff may prove copying by showing access and "substantial similarity" of the two works. See, e. g., Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946); Whitney v. Ross Jungnickel, Inc., 179 F.Supp. 751, 753 (S.D.N.Y.1960), 2 Nimmer, supra, § 141.2 at 613. Here Joan not only admits access, but also the actual viewing by its designers of Novelty's Style 253 before its own designs were produced. 2

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The District Court found, however, that there was no substantial similarity because certain differences in the works "would be apparent to a furniture manufacturer, or for that matter to a consumer seriously contemplating purchase of a couch covered with one or another of the fabrics."

" Substantial similarity" is to be determined by the "ordinary observer" test. 3 Judge Learned Hand in defining this test stated there is substantial similarity where "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). More recently this court formulated the test as "whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966). And, of course, by definition "(t)he copying need not be of every detail so long as the copy is substantially similar to the copyrighted work." Comptone Co. v. Rayex Corp.,251 F.2d 487, 488 (2d Cir. 1958); United Merchants & Manufacturers, Inc. v. K. Gimbel Accessories, Inc., 294 F.Supp. 151, 154 (S.D.N.Y.1968). 4

We have viewed the fabrics presented in the...

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