Concrete Machinery Co., Inc. v. Classic Lawn Ornaments, Inc., 87-1491

• Decision Date: 09 October 1987
• Docket Number: No. 87-1491,87-1491
• Parties: , 1988 Copr.L.Dec. P 26,258, 6 U.S.P.Q.2d 1357 CONCRETE MACHINERY COMPANY, INC., Plaintiff, Appellant, v. CLASSIC LAWN ORNAMENTS, INC., et al., Defendants, Appellees. . Heard
• Court: U.S. Court of Appeals — First Circuit

Page 600

843 F.2d 600

56 USLW 2601, 1988 Copr.L.Dec. P 26,258,

6 U.S.P.Q.2d 1357

CONCRETE MACHINERY COMPANY, INC., Plaintiff, Appellant, v. CLASSIC LAWN ORNAMENTS, INC., et al., Defendants, Appellees.

No. 87-1491.

United States Court of Appeals, First Circuit.

Heard Oct. 9, 1987.

Decided April 5, 1988.

James D. Myers with whom Dickson M. Lupo, Bell, Seltzer, Park & Gibson, Charlotte, N.C., James F. O'Brien, William A. Horne and Goulston & Storrs, Boston, Mass., were on brief, for plaintiff, appellant.

Alan B. Almeida with whom Connor & Hilliard, P.C., Walpole, Mass., was on brief, for defendants, appellees.

Before CAMPBELL, Chief Judge, TORRUELLA and SELYA, Circuit Judges.

TORRUELLA, Circuit Judge.

This is an appeal from the denial of a motion for a preliminary injunction in an action for copyright infringement. We find that the denial was based on an incorrect analysis of appellant's likelihood of success on the merits of its claim and remand for reconsideration.

I

Appellant Concrete Machinery Company, Inc. (Concrete) manufactures and sells molds to make concrete statues and ornamental articles, such as swans, donkeys, deer, and urns, used primarily for lawn decorations. Many of these designs are to some extent original works for which appellant has secured registered copyrights. The validity of these copyrights is not questioned in this action.

Appellee Classic Lawn Ornaments, Inc. (Classic) manufactures and sells concrete lawn statues and ornaments. ¹ It avers that it makes no molds and that all its products are manufactured from molds which it purchases elsewhere. Nonetheless, Concrete claims that Classic has copied Concrete's designs, or abetted such activity, and sold those copies without its authorization.

On April 23, 1987, Concrete filed its complaint alleging copyright infringement and unfair competition. It also sought impoundment and temporary restraining orders. Seven of its designs were the subject of those initial filings. They were the No. 212 Senior Swan (Swan), the No. 345 Donkey, the No. R-350 Life Size Deer, the No. 353-R Standing North Woods Fawn (Standing Fawn), the No. 355-R Reclining North Woods Fawn (Reclining Fawn), the No. 357-R Medium Size Standing White Tail Deer (Medium Deer), and the No. 447 1/2 Lady Grecian. In support of its allegations, Concrete submitted the following evidence: photographs and proof of copyright registration of the seven items; its current catalogue, also showing pictures of most of the items; pictures of the alleged offending copies, photographed at Classic's place of business; and affidavits by Vernon Flowers, president of Concrete, and James Edwards, an investigator occasionally employed by Concrete to look into potential copyright infringement of Concrete's designs. In their affidavits, Flowers and Edwards described how bogus molds are created from Concrete's products and explained how they identify the illegal copies made from these bogus molds. Flowers further stated that he had used this method of identification to discover and successfully prosecute, over a twenty-two year period, nine other incidents of infringement of Concrete's copyrighted designs. He then averred that, because of customer complaints, he visited Classic's place of business on February 27, 1987 and found numerous works which appeared to be identical to products made with Concrete's molds. He further swore that he returned to Classic on April 21 with Edwards and specifically identified fourteen Classic products which were created with bogus molds and were unauthorized copies of Concrete's copyrighted designs. Seven of the designs discussed in the Flowers affidavit were the products that were the subject of Concrete's original complaint. The other seven were items, he stated, not included in the complaint because he could not obtain copies of their copyright registration in time to submit with the complaint, filed the day after the affidavit was taken.

The district court issued an order for impoundment and temporary restraining order on the same day the complaint was filed. The order was based solely on the evidence submitted by Concrete. It enjoined Classic from any acts of copyright infringement of Concrete's designs and directed the United States Marshal to impound by segregation or designation any existing illegal copies in Classic's possession. The court issued the order upon a finding that Concrete had made a prima facie showing that it would succeed on the merits of its action and would be irreparably harmed without the order.

Four days later, Concrete filed its first amended complaint. That complaint included six of the seven items not identified in the original complaint but discussed in the Flowers affidavit. These six additional designs were the No. 259-B Grotto, the No. 385 Cavalier, the No. 529-C Baby Rustic, the No. 120 Giant Sea Shell Bowl, the No. 347 Pedro Jr., and the No. 113-A Clamshell Bowl. Photographs and proof of copyright registration of all thirteen items were submitted in support of the complaint. It is not clear from the record whether, at this time, Concrete submitted photographs of the Classic products which allegedly infringed the six designs added to the complaint; however, Classic has not denied Concrete's assertion that such evidence was before the court at the time of the preliminary injunction hearing.

In its defense, Classic submitted photographs of its products and affidavits by its president and its manager, co-defendants Louis and Anthony Almeida. This evidence was submitted the day before the hearing on the motion for preliminary injunction. The Almeidas averred that there were "significant and substantial differences" between Classic's products and the copyrighted designs of Concrete. The identified differences referred to only six of the seven designs which were the subject of the original complaint. No distinctions were made regarding Concrete's Medium Deer or any of the six designs added by the first amended complaint, whose filing preceded the affidavits by one week. The defendants did claim that Classic had not infringed rights in two of these later named designs, the Cavalier (lawn jockey) and the Pedro Jr., because its copies allegedly were made with molds purchased from Concrete by the former owners of Classic.

In their affidavits, the defendants claimed only the following distinctions and did not imply there were any others: Life Size Deer. First, the defendants both claimed that "Classic's life size deer mold does not contain a separate mold piece for the tail as does Plaintiffs (sic) and Classic's mold has consistently had the deer's tail pointing downward." Neither affidavit indicated the relevancy of the "separate mold piece" observation; nor did they note that Concrete's life size deer also has its tail pointing downward, as shown in the pictures of the deer submitted with the original and first amended complaints. The Almeidas also averred that Classic's deer had different shaped legs and chest from Concrete's deer. In support, they referred to the plaintiff's catalogue. The defendants overlooked the fact, however, that the deer pictured in the catalogue was design No. 349, not No. R-350 which was the subject of the complaint and whose picture was appended thereto. Therefore, the only true distinction identified by the defendants was that Classic's deer was two and one-half inches shorter and two inches narrower than Concrete's.

Standing Fawn. The Almeida affidavits stated that Classic's fawn is twenty-six inches high compared to Concrete's twenty-three inch fawn; that Classic's fawn had a base and antlers whereas Concrete's did not; and that Classic's fawn faced left while Concrete's faced straight ahead. Again, in support, they referred to the plaintiff's catalogue. The catalogue shows that the head of Concrete's No. 353-R fawn actually faces right, not straight ahead. Adjacent to the picture of the No. 353-R fawn in the catalogue is a picture of Concrete's No. 354-L fawn. While not named in either the original or first amended complaint, this latter fawn is identical to the No. 353-R except that its head faces left rather than right. ²

Reclining Fawn. Referring again to the plaintiff's catalogue, the Almeidas averred that Classic's fawns are "smaller in dimension" and have heads which face in "significantly different directions" than Concrete's fawns. The catalogue shows that the No. 355-R fawn faces to the right. Adjacent to the picture of the No. 355-R in the catalogue is the left facing No. 356-L fawn, also not named in the original or first amended complaint. ³ These fawns appear in the catalogue to be virtually identical except for the direction of their heads.

Lady Grecian. The Almeidas noted that the base of Classic's grecian is plain while Concrete's is decorated. They also swore that Classic's is one inch shorter in height and three-eighths of an inch smaller in width.

Swan. The only distinction claimed by both affiants was that Classic's swan is "somewhat smaller" than Concrete's swan.

Donkey. The Almeidas pointed out that, unlike Concrete's donkey, their company's donkey had a "distinctive blanket/harness around its middle."

The Almeidas did not claim there were any other differences between Classic's allegedly infringing products and the thirteen designs named in the first amended complaint, filed one week prior to the execution of their affidavits. They did, however, aver that "[m]olds and statues identical to items on which Plaintiff claims a copyright are available from other well-known manufacturers around the country." They attached copies of catalogues from other manufacturers to support this claim.

The Almeidas also addressed the issue of potential harm Classic could suffer were the preliminary injunction granted. Without referring to any data, they both simply claimed that "Classic will in all likelihood, face severe economic hardships and may be required to cease doing...