Towle Mfg. Co. v. Godinger Silver Art Co., Ltd.

• Decision Date: 02 July 1985
• Docket Number: No. 85 Civ. 3153 (LBS).,85 Civ. 3153 (LBS).
• Citation: 612 F. Supp. 986
• Parties: TOWLE MANUFACTURING COMPANY and Galway Crystal, Ltd., Plaintiffs, v. GODINGER SILVER ART CO., LTD., Defendant.
• Court: U.S. District Court — Southern District of New York

612 F. Supp. 986

TOWLE MANUFACTURING COMPANY and Galway Crystal, Ltd., Plaintiffs, v. GODINGER SILVER ART CO., LTD., Defendant.

No. 85 Civ. 3153 (LBS).

United States District Court, S.D. New York.

July 2, 1985.

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Frankfurt, Garbus, Klein & Selz, New York City, for plaintiffs; Richard Kurnit, Edward H. Rosenthal, New York City, of counsel.

Stiefel, Gross, Kurland & Pavane, New York City, for defendant; Martin B. Pavane, New York City, of counsel.

OPINION

SAND, District Judge.

I. INTRODUCTION

Plaintiffs Towle Manufacturing Co. and its wholly-owned subsidiary, Galway Crystal, Ltd., (hereinafter "Galway" or "plaintiff") are currently engaged in the manufacture and sale of glassware and crystal items; one of their products, a decorative mouthblown and hand-cut crystal baby bottle ("Galway baby bottle"), is the subject of this litigation. Defendant Godinger Silver Art Co., Ltd. ("Godinger") manufactures and distributes items of glassware and silver, one of which is a pressed glass, machine-made decorative baby bottle ("Godinger baby bottle"). The plaintiff's Complaint, filed on April 24, 1985, alleges that Godinger has infringed plaintiff's copyright in the Galway baby bottle by its conscious copying and distribution of a baby bottle virtually indistinguishable from Galway's; that Godinger has infringed plaintiff's trademark "Shannon" by marketing its baby bottle in a dark green box similar to plaintiff's with the unauthorized use of the mark "Shannon" on it; and that Godinger has engaged in unfair competition and palming off under the Lanham Act, 15 U.S.C. § 1125(a) (1982) as well as under state law. The complaint, alleging that there is no adequate remedy at law, seeks to enjoin Godinger from further copyright and trademark infringement. The complaint also seeks an accounting for all of Godinger's profits from the sale of its infringing goods, as well as punitive damages, the treble amount of plaintiff's actual damages, and attorneys' fees. Upon application of an order to show cause, the Court granted a temporary restraining order following a hearing on April 24, 1985. The Court held a combined hearing on the preliminary injunction and on the merits on April 26, 1985, pursuant to Fed.R.Civ.P. 65(a)(2), after which the temporary restraining order was lifted. The following constitutes the Court's findings of fact and conclusions of law on the preliminary injunction and on the merits.

II. FACTS

In April of 1984, plaintiff Galway displayed its baby bottle, with copyright notice affixed, at a trade show; it subsequently began an extensive advertising campaign in August of 1984 to promote the sale of its bottle, and to date has spent approximately $75,000.00 to this end. Galway's witnesses testified that the company has restricted its sales to "upmarket" department stores and giftware retailers, and has sought to promote a future market for its baby bottle by utilizing a sales technique in which demand outpaces supply. Galway products, including its baby bottle, are made in Ireland, and they enjoy a sustantial market in the United States. The first shipment of Galway baby bottles arrived on retail shelves in the United States in the fall of 1984, according to plaintiff's testimony. Galway estimates that, to date, approximately 15,000 of its bottles have been shipped to the United States, with orders for approximately 10,000 additional bottles outstanding at the time of trial.

Although Galway and Towle, according to testimony, do not seek copyright or trademark protection for their crystal designs on a regular basis, they have made efforts at protecting some new designs since 1982, at which time Galway was taken over by Towle. In April of 1984, Towle's in-house counsel wrote a memo to William Tobin, the managing director of Galway Crystal, Ltd. in Ireland, describing the importance of obtaining copyrights and trademarks for new designs, and urging Galway to provide Towle with the documentation required to protect its original designs slated for distribution in the United States.

Tobin testified that he asked Galway's plant manager to order and affix labels to its baby bottle bearing the proper copyright designations near the words "Galway Irish Crystal." However, in April of 1985, shortly after plaintiff became aware of the existence of Godinger's baby bottle, Tobin discovered that the first shipment of Galway bottles had gone to the United States "through mistake and inadvertence" (Tobin Affidavit) without the proper labels bearing the circled C designation. He testified that he attempted to remedy this situation by making sure that subsequent shipments of the bottle to the United States contained the proper labels, and by contacting Towle's trademark counsel. According to the latter's testimony, Towle took prompt action upon discovery that defendant's baby bottle was on the market. Its actions included filing a registration form for the Galway bottle's design with the copyright office on April 10, 1985; sending telegrams and letters to Godinger on April 16, 1985, ordering it to cease and desist from further infringement of Galway's rights in its bottle; and writing to salespeople in the United States on April 23, 1985, enclosing labels bearing the circled C and requesting that these be affixed personally by Galway's employees. Shortly thereafter, upon Godinger's refusal to cease the manufacture and sale of its baby bottle, Galway and Towle filed the instant action. This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), (b) (1982) and 15 U.S.C. § 1121 (1982).

Arnold Godinger, the president and chief executive officer of Godinger, testified that he first observed silver-topped plain glass baby bottles at a trade show in Italy in 1983. He stated at trial that he spoke to the manufacturer of the bottle regarding the design and marketing of a more decorative bottle made of cut instead of plain glass and with a similar silver top. Samples of the Italian bottles arrived at his office in the United States in early 1984. Prior to his taking any further steps in designing or manufacturing a decorative bottle, Godinger testified that he saw an advertisement picturing the Galway bottle in a magazine in August of 1984. He sent this advertisement to manufacturers in Germany and Japan, instructing them to make "very similar" samples in pressed instead of hand-cut glass and of slightly larger size. Godinger purchased a Galway bottle in Chicago in November of 1984, which he later brought to the German manufacturer from whom he had previously requested samples. Godinger ultimately decided, however, to have its bottles manufactured in Japan.

Godinger described the particular cuts or designs on the Galway bottle as "traditional," and introduced evidence that the same designs, in similar configurations, have been utilized by numerous glassware manufacturers on numerous items for a long time. Godinger's testimony indicated that, given the popularity and prevalence of these patterns in crystalware, he felt "comfortable" utilizing the same combination of cuts on his own version of a decorative baby bottle. Accordingly, after he had seen Galway's advertisement and the bottle itself, Godinger directed a Japanese company to manufacture a baby bottle from the sample it had made up earlier. The record does not indicate the precise date on which the Godinger bottles arrived in the United States and were shipped to retailers; nevertheless, it is uncontroverted that a major New York "upmarket" retailer sells Godinger bottles and has recently advertised them in its catalogue, and a number of Godinger bottles are currently on order for other retailers as well.

Plaintiff Galway contends that the sale of Godinger bottles in an "upmarket" retail store, combined with the close similarity in appearance and trade dress of the two bottles and the resulting likelihood of confusion of the products, should lead to the imposition of liability on Godinger. At trial, defendant's president agreed to discontinue use of the green box and the name "Shannon," and further agreed to place defendant's name on the box in which the bottle is sold, thus eliminating the need for further consideration of the issue of trademark infringement. The issues remaining for resolution in this proceeding include plaintiff's copyright infringement and unfair competition claims under federal and common law. For the reasons discussed below, this Court denies plaintiff's requests for injunctive relief, damages and attorneys' fees.

III. DISCUSSION

A. Copyrightability of Plaintiff's Design

At the outset, the Court must determine whether plaintiff's design is entitled to copyright protection, since an action for copyright infringement such as plaintiff's cannot be maintained in the absence of ownership of a valid copyright. American Greetings Corp. v. Easter Unlimited, Inc., 579 F.Supp. 607, 613 (S.D.N.Y.1983). Plaintiff does not, and indeed cannot, claim copyright protection for the idea of a decorative baby bottle. See Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir.) ("It is an axiom of copyright law that the protection granted to a copyrightable work extends only to the particular expression of an idea and never to the idea itself."), cert. denied, 429 U.S. 980, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976). (Indeed, Waterford, another manufacturer of Irish hand-cut crystal, has a similar product on the market not challenged by plaintiff). Rather, plaintiff claims that its particular combination of design elements, consisting of five different styles of glassware cuttings on its bottle, is copyrightable. Plaintiff has characterized its bottle as an original work both in its copyright application and at trial. Defendant Godinger, however, contends that Galway, by utilizing a series of well-known cuttings that exist in the public domain, has designed a work that is not subject to copyright...