937 F.2d 759 (2nd Cir. 1991), 1125, Folio Impressions, Inc. v. Byer California

Docket Nº:1125, Docket 90-9005.
Citation:937 F.2d 759
Party Name:FOLIO IMPRESSIONS, INC., Plaintiff-Appellant, v. BYER CALIFORNIA; Macy's New York, Inc.; Lida Manufacturing Co.; and John Does--20, Defendants-Appellees.
Case Date:June 27, 1991
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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937 F.2d 759 (2nd Cir. 1991)

FOLIO IMPRESSIONS, INC., Plaintiff-Appellant,


BYER CALIFORNIA; Macy's New York, Inc.; Lida Manufacturing

Co.; and John Does--20, Defendants-Appellees.

No. 1125, Docket 90-9005.

United States Court of Appeals, Second Circuit

June 27, 1991

Argued Feb. 25, 1991.

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[Copyrighted Material Omitted]

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Kenneth R. Schachter, New York City (Silverberg, Stonehill & Goldsmith, of counsel), for plaintiff-appellant.

Michael Delikat, New York City (Francis W. Connolly, Baer Marks & Upham, of counsel), for defendants-appellees.

Before OAKES, Chief Judge, and CARDAMONE and MAHONEY, Circuit Judges.

CARDAMONE, Circuit Judge:

Intense competition in the field of fabric designs to be used for women's clothes is nothing new, and is perhaps prompted by the fact that a fashion idea, here a rose, lives little longer than the bloom of the flowers whose image it uses. In this copyright infringement suit with respect to a fabric design used in such manufacture, we consider three separate claimed infringements: (1) a design of a rose for which plaintiff had a registered copyright; (2) the placement of that rose repeated in horizontal rows against an ornate background; and (3) the background itself. Plaintiff insists that it is entitled to copyright protection on each item, and that defendants infringed its rights on all three. Defendants contend that plaintiff's design is not original or, even if it is, defendant's design resulted from its own original effort and is not confusingly similar to plaintiff's. The district court variously concluded that either there was no copyright protection or no infringement; hence, it granted judgment to defendants. 752 F.Supp. 583. Although we reach the same ultimate destination, we take a slightly different path.

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Plaintiff Folio Impressions, Inc. (Folio), a New York importer and seller of printed fabric to women's clothing manufacturers, purchased in August 1987 an assignment of the rights to a textile design pattern (Pattern # 1365) created by Richard Sadjan, an employee of Bruckert Design Studio which is located in Lyon, France. Folio published the pattern, and then promoted and sold the fabric imprinted with the design to its customers. Later, it registered Pattern # 1365 with the United States Office of the Register of Copyrights and was issued a Certificate of Registration. Folio converted greige goods--that is, in an unbleached, undyed state--into printed textiles for wearing apparel bearing imprints of design Pattern # 1365 and sold the material to garment manufacturers.

Following appellant's publication of Pattern # 1365 on September 5, 1987, defendant Byer California, a clothing manufacturer, obtained a "swatch" of Pattern # 1365 and showed it to defendant Lida Manufacturing, a fabric converter selling printed fabric to apparel manufacturers--and a competitor of Folio's--asking whether Lida had a similar design. Lida said "no," but that using its reference materials it could create one similar to Folio's. Lida then created its own design pattern entitled "Baroque Rose," and Byer purchased fabric from Lida printed with the Baroque Rose pattern and sold 1,656 dozen garments using that pattern to its customers.

On July 28, 1988 Folio filed a complaint and shortly thereafter an amended complaint in the United States District Court for the Southern District of New York, Bernard Newman, Judge (sitting by designation), against Byer and Lida alleging the Baroque Rose pattern infringed its Pattern # 1365 copyright. On August 8 the district court granted a preliminary injunction, with defendants' consent, preventing Byer from marketing any items using Lida's Baroque Rose design. In January 1990 Judge Newman conducted a two-day bench trial. He issued an opinion on October 5, 1990, finding that because the background portion of Folio's design was copied from the public domain and the pattern in which the Folio roses were placed against the background was not original, neither the background or the placement of the roses against that background were copyrightable. The district court sustained Folio's copyright with respect to the rose itself in Pattern # 1365, but concluded that Lida and Byer had not infringed it. The trial court therefore dissolved the previously issued preliminary injunction and entered judgment on October 16, 1990 for defendants. This appeal followed.


Folio raises two arguments in support of its contention that the district court erroneously failed to find that Lida's Baroque Rose design infringed on Pattern # 1365. Folio first asserts that the district court incorrectly found certain elements of Pattern # 1365 were not original and thus not protected by copyright. Folio next insists that the Baroque Rose design was substantially similar to Pattern # 1365 and thus defendants infringed its copyright. We address each argument in turn.

I Copyrightability of Pattern # 1365

We begin with general principles bearing on the copyrightability of fabric designs. The right of an author under the common law to have the sole right of first printing and publishing his work was settled early in England by Lord Mansfield writing for the majority in Millar v. Taylor, 4 Burrows 2303 (1769). This common law concept was adopted in our Constitution which authorized Congress "[t]o promote the progress of science and useful arts, by securing, for limited times to authors and inventors, the exclusive right to their respective writings and discoveries." U.S. Const. art. I, Sec. 8. The word "writings" is broadly construed; it includes all its forms that may be used to the end that the author's ideas are tangibly expressed. Thus, a drawing which may be "multiplied by the arts of printing in any of its branches" is copyrightable by its author, who is defined as the "originator" or "maker." Burrow-Giles Lithographic Co. v. Sarony,

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11 U.S. 53, 56-58, 4 S.Ct. 279, 28 L.Ed. 349 (1884).

Among those forms of "writings" now recognized as entitled to copyright protection are fabric designs, which are the subject matter of this appeal. See, e.g., Millworth Converting Corp. v. Slifka, 276 F.2d 443 (2d Cir.1960) (Friendly, J.); Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir.1960) (L. Hand, J.). Fabric designs are distinguished from "dress designs," which as useful articles under 17 U.S.C. Sec. 101, are not typically copyrightable. See Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452, 455 (2d Cir.1989); 1 Nimmer on Copyright, Sec. 2.08(H) (1990).

  1. Copyrightability of the Folio Rose

    Turning now to the more specific law that governs this case, it is axiomatic that to establish a copyright infringement cause of action, a plaintiff must show copyright ownership and unauthorized copying by defendants. See Weissmann v. Freeman, 868 F.2d 1313, 1320 (2d Cir.), cert. denied, --- U.S. ----, 110 S.Ct. 219, 107 L.Ed.2d 172 (1989); Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir.1985). A pervasive requirement of copyright protection is that the work be original, Feist Publications, Inc. v. Rural Tel. Serv. Co., --- U.S. ----, 111 S.Ct. 1282, 1287, 113 L.Ed.2d 358 (1991), a requirement that follows from the fact that such protection is accorded only to authors. See L. Batlin & Sons, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir.) (en banc), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976). A certificate of registration from the U.S. Register of Copyrights constitutes prima facie evidence of the validity of a copyright, 17 U.S.C. Sec. 410(c), though that presumption may be rebutted. See Hasbro Bradley, 780 F.2d at 192. In determining what parts of Pattern # 1365 are entitled to copyright protection, we review the trial court's determinations of originality under a clearly erroneous standard. Fed.R.Civ.P. 52(a); Financial Information, Inc. v. Moody's Investors Serv., Inc., 808 F.2d 204, 207-08 (2d Cir.1986), cert. denied, 484 U.S. 820, 108 S.Ct. 79, 98 L.Ed.2d 42 (1987).

    With those rules in mind, we address the copyrightability of the Folio Rose first. As noted, Folio had a certificate of copyright registration for its rose which entitled it to a presumption of validity. Defendants offered no proof at trial to overcome this presumption. Thus, the district court correctly found Folio owned a copyright in the Folio Rose and was entitled to be protected from infringement. See 17 U.S.C. Sec. 410(c); Weissmann, 868 F.2d at 1320-21.

  2. The Background Component of Pattern # 1365

    With respect to the copyright regarding the background of design Pattern # 1365, Folio presented no proof at trial, being content to rest solely on its certificate's presumption of validity. The district court found the presumption rebutted. In reaching this finding, the trial court relied on the testimony of Catherine Bruckert, commercial attache in charge of sales for Bruckert Design Studio--the studio that had sold Folio design Pattern # 1365--and on defendants' expert witness, Professor Lee Stewart. These witnesses testified to the effect that Bruckert's designer, Richard Sadjan, the original creator of the Folio Rose, had copied the background of Pattern # 1365 from an unspecified public domain source. Based upon this proof the trial court ruled the background was not original and therefore not copyrightable. See Feist Publications, Inc., 111 S.Ct. at 1287 ("To qualify for copyright...

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