Andre Matenciot, Inc. v. David & Dash, Inc.
| Decision Date | 27 January 1976 |
| Docket Number | No. 74 Civ. 4956.,74 Civ. 4956. |
| Citation | 422 F. Supp. 1199 |
| Parties | ANDRE MATENCIOT, INC., Plaintiff, v. DAVID & DASH, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
COPYRIGHT MATERIAL OMITTED
Kane, Dalsimer, Kane, Sullivan & Kurucz by David H. T. Kane, New York City, for plaintiff.
Zelby, Burstein, Bernstein & Hartman by Herbert Burstein, New York City, for defendant (after June 23, 1975).
Ruben, Schwartz & Silverberg by Leslie H. Goldenthal, David Sklaire, New York City, for defendant (through June 23, 1975).
Pursuant to Rules 70 and 56 of the Federal Rules of Civil Procedure, plaintiff in this copyright infringement action has moved for a) an order adjudging defendant to be in contempt of the preliminary injunction order issued by this court on November 27, 1974; b) an order adjudging that defendant has failed to comply with this court's order of December 13, 1974, in that defendant failed to purge its contempt of the aforesaid preliminary injunction order; c) an order granting summary judgment on the issue of liability, enjoining further alleged infringements, awarding damages and reasonable attorneys' fees to plaintiff as provided in 17 U.S.C. §§ 101 and 116, and referring the case to a magistrate for an accounting of the alleged damages, and fees; and d) any other and further relief as may be just in the circumstances. Both plaintiff and defendant rely upon all the pleadings, affidavits, exhibits, hearing transcripts and other papers on file in this case.
For the reasons which follow, the court finds defendant in contempt of its order of November 27, 1974 and also finds that defendant failed to purge itself of such contempt as provided in this court's order of December 13, 1974 but denies the motion for summary judgment and associated relief.
This is an action for copyright infringement arising under 17 U.S.C. §§ 1 et seq. and jurisdiction is predicated upon 28 U.S.C. § 1338(a). Plaintiff is a New York corporation with its principal place of business at 240 East 58th Street, New York City. Defendant is a Florida corporation with its principal place of business in Florida, but with a showroom at 201 East 56th Street, New York City.
At issue in this case are two design copyrights. In August of 1971, plaintiff purchased from a British company two designs which it refers to as "Farah" and "Trefle", and which it has sold to the public on wallpaper and fabric since late in 1971. In October of 1974, plaintiff made appropriate application to the Register of Copyrights and received Registration numbers Gp 93963 and Gp 93964 for Farah and Trefle, respectively.
At some point in August or September of 1974, plaintiff discovered that defendant was publishing on wallpaper and fabric two designs, known as Maharani (defendant's number 5034) and Chutney (defendant's number 5033), which exhibit substantial similarities to its own Farah and Trefle.
Defendant's designs, Maharani and Chutney, were published in ten different combinations of color and pattern, as follows:
Def's Catalog No
Wallpaper MAHARANI
516-585 through Five different
516-589 color combinations 5
CHUTNEY
516-590 through Five different
516-594 color combinations 5
Fabric
MAHARANI
5034 Five different
color combinations 5
CHUTNEY
5033 Five different
color combinations 5
______
20
Thus, there were twenty different combinations of color, pattern and medium (i. e., wallpaper or fabric) bearing the designs at issue.
These twenty different allegedly infringing combinations were published by defendant in a total of seven different ways: catalogs, wallpaper samples, board fabric samples, road line fabric samples, memo fabric samples, rolls of fabric, and rolls of wallpaper. Each catalog contained twelve and one-half pages of the accused designs, and included each of the twenty different combinations.
According to the affidavit of defendant's Executive Vice President, Jay Dash, defendant's catalog was printed by Niagara Sample Book Co. of Niagara Falls, New York.
Defendant claims that a total of 5,199 catalogs was shipped by Niagara Sample Book to the following recipients on the indicated schedule:
On September 6, plaintiff's attorney wrote to defendant's New York showroom, accusing it of copyright infringement through the distribution of the accused designs, and demanding specified remedial action. In reply, Mr. Jay Dash telephoned plaintiff's attorney on September 12, refusing to withdraw the accused designs since defendant claimed equal or superior rights therein. Plaintiff then reiterated its demands by letter of September 17.
Apparently finding no satisfaction, plaintiff filed and served the complaint in this case on November 12, 1974, requesting injunctive and monetary relief, interim impoundment and ultimate destruction of all allegedly infringing materials, costs and attorneys' fees, and any further relief the court might deem proper.
At the instance of plaintiff, a hearing was held on November 15, at which attorneys for both parties were present. The court there issued a temporary restraining order enjoining defendant, its agents, servants, successors, and assigns from infringing plaintiff's specified copyrights, "and from printing, reprinting, publishing, vending or distributing any copies of plaintiff's work, or catalogs displaying that work, that is the subject of said copyrights."
The preliminary injunction hearing began on November 25 and continued on November 26, 1974. Both plaintiff and defendant called witnesses. Defendant called plaintiff's principal, Andre Matenciot, and also called defendant's designer of the accused fabrics.
Upon conclusion of the preliminary injunction hearing, the court determined that defendant's accused designs were at least substantially similar to plaintiff's copyrighted designs and a preliminary injunction issued.
Defendant was directed to file, within ten days of the effective date of the order, an affidavit certifying that it had complied with the impoundment order.
The preliminary injunction order was filed on December 3, 1974. By stipulation, the time for compliance was extended until December 11. On that date, defendant's then attorney wrote to the court seeking clarification of the impoundment provisions of the order in view of the alleged ambiguity of the order and the expense of assembling all the allegedly infringing material, and requested an immediate conference to that end.
Since plaintiff, on December 12, filed his first motion to punish for contempt of the preliminary injunction order, a hearing was held on December 13. At the conclusion of that hearing, the court found that the defendant had not complied with the terms of the preliminary injunction order, and that the defendant was, accordingly, in contempt of the court. Defendant was ordered to purge itself of its contempt within fourteen days by delivering to the court "all pages of catalogs bearing infringing materials" and filing an affidavit of compliance. As to all other materials allegedly infringing plaintiff's copyrights, defendant was directed to file a sworn inventory "affirming that all such other materials are in defendant's warehouse." Any failure of compliance on or after December 28, 1974 was to result in a "penalty fine" of five hundred dollars per day.
In order to place in proper perspective defendant's efforts to comply with these orders, some explanation of defendant's business operation is necessary. Defendant sells catalogs containing its wallpaper and fabric designs to the seven distributors in the United States, which were previously listed. All these distributors are independent selling agents and they, in turn, have wholesale and retail customers throughout the United States. Defendant has no contractual relations with these customers, nor, in fact, does it have any...
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