626 F.2d 1112 (2nd Cir. 1980), 1231, Malden Mills, Inc. v. Regency Mills, Inc.

Docket Nº:1231, 1408, Dockets 80-7303, 80-7341.
Citation:626 F.2d 1112
Party Name:178 MALDEN MILLS, INC., Plaintiff-Appellant-Cross Appellee, v. REGENCY MILLS, INC., Defendant-Appellee-Cross Appellant.
Case Date:August 07, 1980
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 1112

626 F.2d 1112 (2nd Cir. 1980)


MALDEN MILLS, INC., Plaintiff-Appellant-Cross Appellee,


REGENCY MILLS, INC., Defendant-Appellee-Cross Appellant.

Nos. 1231, 1408, Dockets 80-7303, 80-7341.

United States Court of Appeals, Second Circuit

August 7, 1980

        Argued June 13, 1980.

        James K. Silberman, New York City (Blum, Kaplan, Friedman, Silberman & Beran, New York City, Steven H. Hartman, New York City, of counsel), for plaintiff-appellant-cross appellee.

        Richard Seltzer, New York City (Ruben, Schwartz, Lasker & Schnall, New York City, of counsel), for defendant-appellee-cross appellant.

        Before LUMBARD and MANSFIELD, Circuit Judges, and MEHRTENS, District Judge. [*]

        LUMBARD, Circuit Judge:

        Malden Mills appeals from the denial by the District Court for the Southern District of New York, Brieant, J., of a permanent injunction against Regency Mills based on Regency's alleged infringement of a copyrighted textile design. Judge Brieant found that all the requirements for such an injunction, except that of substantial similarity of the two designs, had been met. In our view it is apparent that the two designs are in fact substantially similar and, accordingly, we reverse and remand to the district court with instructions to enter a permanent injunction.

        In 1977, Malden hired a design firm to create a textile design consisting of a tree

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scene with flowers. Malden, by its officer Sanford Levine, accepted the design, designated it as Style No. 818N and registered its copyright as No. VA 42-277. Style No. 818N has been one of Malden's most successful fabrics. Since its introduction in 1978, approximately 1,700,000 yards of Style No. 818N, nearly all of it destined for furniture upholstery, have been sold. The pattern is available in four color mixes, of which one, in which brown predominates, known as No. 637, accounted for 98% of Style No. 818N's sales.

        In the summer 1979, Sanford Levine left Malden, along with his brothers, also Malden employees, to found Regency Mills. Soon afterwards, Regency introduced a fabric called "Rustic Road," available in two color mixes, rust and brown. There was no testimony at trial as to how Rustic Road was designed, although Sanford Levine did testify that he had told his brother Ronald that he "wanted a tree-type pattern." The district court found that the principals of Regency knew of the design of Style No. 818N and of its success.

        The sole substantial issue...

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