Belding Heminway Co. v. Future Fashions

• Decision Date: 02 August 1943
• Parties: BELDING HEMINWAY CO. v. FUTURE FASHIONS, Inc., et al.
• Court: U.S. District Court — Southern District of New York

55 F. Supp. 39

BELDING HEMINWAY CO. v. FUTURE FASHIONS, Inc., et al.

District Court, S. D. New York.

August 2, 1943.

Dwight, Harris, Koegel & Caskey, of New York City (Frederick W. P. Lorenzen, of New York City, of counsel), for plaintiff.

Charles Sonnenreich, of New York City, for defendant Future Fashions, Inc.

BRIGHT, District Judge.

Plaintiff seeks an injunction pendente lite restraining the defendant from advertising or offering for sale, or taking or filling orders for the sale or delivery, of dress goods claimed to infringe plaintiff's design patent No. 134490.

The patented design consists of three rows of daisy like figures, each interlocking with the other, the petals on the two outer rows being of a white or light color with a dark center row of much the same style of figures, with the petals of the color of the center of the other two rows and the center the color of the petals on the outer rows. The rows are repeated at intervals of about 3½ inches, the intervening space having a background of a dark color dotted with polka dots about ½ inch apart. The design is very pleasant and striking, and to my untutored eye seems very attractive and unusual.

It is not disputed that letters patent were issued on December 1, 1942. On August 27, 1942, plaintiff caused its design to be registered with the Registration Bureau of the National Federation of Textiles, a trade association maintained for the purpose of supplying the trade with information as to the ownership of textile fabric designs and to prevent conflict in designs for printed rayons and silks. When the design was presented to that Bureau, it was compared with others in its field and nothing was found already in use that could be considered so similar as to be thought identical, and thereupon the design was registered for one year. Thereafter, plaintiff manufactured the design in high quality rayon textile fabric, and sold and is still selling the same to selected manufacturers for the manufacture of quality dresses. It has issued licenses to nine firms in New York City, and to one in Chicago, who have purchased some 53,000 yards of the material and made up the same into dresses which retail from $7.95 to $14.95 each. That the design was the exclusive property of the plaintiff was published by it in the "Women's Wear Daily" of July 8, 1943.

In the July issue of "Mademoiselle", a fashion magazine, an advertisement appeared over the name of the defendant, which is not a customer or licensee of plaintiff, picturing a dress made of material identical in design to that of the plaintiff's, and the dress pictured in the advertisement and priced at $4 was identical in style to a dress manufactured and sold by a licensee of the plaintiff. On June 30, 1943, plaintiff purchased from Gimbel's in New York for $4.02, a dress identical in style and design with the dresses manufactured by plaintiff's licensees and made of material identical in design with that described in plaintiff's patent, the dress bearing the label of the defendant, but being of a cheaper material. The dress was advertised by Gimbel's on July 11, 1943, the advertisement stating: "We used two identical prints of our 7.95 successes (not 7.95 quality but good quality rayon crepe), copied the 7.95 dresses line for line, flower for flower"; and in the description it was further stated "as advertised in Mademoiselle".

Plaintiff's counsel notified defendant on June 30, 1943, calling attention to the advertisement in Mademoiselle, that it contained a reproduction of a dress made of material with a design identical to plaintiff's patented design, and warning defendant the infringers would be held to strict accountability. On July 1, 1943, defendant admitted the infringement, writing: "We wish to advise you that from this time on we will not buy any more of the print belonging to your client Belding Heminway Co., and on which they have a design patent. We are very sorry that we have infringed on your client's design, but we assure you that it was not intentional, and at no time did we know that the pattern that we bought from one of the converters was a patented one"; and it promised that no more of the pattern would be purchased as of the date of the letter.

The facts stated are in no way disputed. The dress sold by defendant and that made of plaintiff's cloth are not only identical in design but are even identical in style. Not only has the defendant admittedly borrowed the design, but it has even copied the model. A plainer case of piracy and infringement could not be shown, and the uncontradicted proof shows that the defendant is still selling dresses of material of the same design and model, notwithstanding its promise of July 1st; and upon the argument, complaint was made that it had temporarily been enjoined from disposing of many thousands more; and all this without license from the plaintiff and in defiance of its notice and rights.

It needs no argument to show that the sale of identical dresses for one-half the price of plaintiff's design and model, will destroy the market for plaintiff's material, both for the plaintiff as well as for its licensees, most of whom are in the same city where defendant is marketing its product; and the effect upon the reputation of the plaintiff, as well as of its licensees, in the minds of the buying public can well be imagined. Such loss is obviously irreparable and difficult of estimate. The wrong obviously would seem to call for a remedy.

I am aware of the cases which curtail the right to an injunction pendente lite where the patent has not been adjudicated. I am also aware of the rule that the court, except in rare instances, will not enjoin unless it is confident that the patent will be sustained. Metropolitan Button Works v. Jaffe, D.C., 19 F.Supp. 860. I have also examined the several cases to which my attention has been called by defendant's counsel, from which he asserts that design patents, at least in this circuit, have not fared so well in recent years. An "oasis" for the exponents of...