HM Kolbe Co. v. Armgus Textile Company

• Decision Date: 14 March 1963
• Docket Number: Docket 27882.,No. 231,231
• Citation: 315 F.2d 70
• Parties: H. M. KOLBE CO., Inc., Plaintiff-Appellee, v. ARMGUS TEXTILE COMPANY, Inc. and Happy Cottons, Inc., Defendants-Appellants.
• Court: U.S. Court of Appeals — Second Circuit

315 F.2d 70 (1963)

H. M. KOLBE CO., Inc., Plaintiff-Appellee, v. ARMGUS TEXTILE COMPANY, Inc. and Happy Cottons, Inc., Defendants-Appellants.

No. 231, Docket 27882.

United States Court of Appeals Second Circuit.

Argued January 17, 1963.

Decided March 14, 1963.

Nathan & Gerstein, New York City (Edward Nathan, Joseph W. Greenberger, New York City, of counsel), for defendants-appellants.

Cowan, Liebowitz & Latman, New York City (Alan Latman, New York City, of counsel), for plaintiff-appellee.

Before LUMBARD, Chief Judge, and MEDINA and WATERMAN, Circuit Judges.

WATERMAN, Circuit Judge.

This action for infringement of a statutory copyright is before the court for a second time. It is not disputed that Happy Cottons, Inc., one of the defendants below, manufactured and sold nearly identical copies of a textile design registered by plaintiff as a "reproduction of a work of art" under the Copyright Law, 17 U.S.C. § 1 et seq. On May 27, 1960, we affirmed the grant of an injunction pendente lite restraining defendants from further manufacture of or sale of fabrics bearing the registered design. H. M. Kolbe Co. v. Armgus Textile Co., 279 F.2d 555 (2 Cir.). The case was subsequently tried before Judge Murphy in the United States District Court for the Southern District of New York, and defendants appeal from a judgment of that court finding Happy Cottons liable for infringement of Kolbe's copyright, permanently enjoining further infringement, and appointing a Special Master to take testimony as to monetary relief which plaintiff should be awarded. The primary question on this appeal concerns plaintiff's alleged forfeiture of its copyright by failure to mark each published copy of its textile design with a notice of copyright as required by 17 U.S.C. § 10.¹ Subject to one modification to be discussed hereafter, we affirm the judgment of the court below.

The design in suit consists of clusters of purple roses, each cluster enclosed and separated from the next cluster by a square border of leaves and petals. By an inversion of the rose clusters in alternate eight-inch squares, a checkerboard pattern is achieved which runs the length and width of the fabric. Kolbe's notices of copyright are printed upon the selvage down one side of the fabric, at intervals of 16 inches. One copyright notice appears for each eight full reproductions of the rose square upon which plaintiff's composite design is based.

Appellants do not maintain that merely by failure to incorporate the notice of copyright within the design, rather than upon the selvage of the fabric, Kolbe failed to meet the statutory requirement of a notice "affixed to each copy" of its work. See Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2 Cir., 1960). They do renew their contention, rejected both below and by this court on their former appeal, that the statute requires one notice for each rose square of Kolbe's design.

We find nothing in the arguments of counsel or in the trial record to move us from our prior rejection of this contention.

The "work" or "reproduction of a work of art" which Kolbe sought to copyright was not merely the single rose square from which its textile design was created. It was rather the composite design itself, which depends for its aesthetic effect upon both the rose figure and the manner in which the reproductions of that figure are arranged in relation to each other upon the fabric.² We find no error in the determination below that the work, as thus construed, was sufficiently original for copyright protection. To be sure, a checkerboard configuration, considered apart from the original component squares here present, does not possess even the modest originality that the copyright laws require. But we find no authority for the proposition that every element of an original work must itself bear the marks of originality.

However, to hold, as we now do, that the copyright in suit covered plaintiff's composite design rather than a single element thereof, does not dispose of appellants' contention that, even so, there was insufficient notice of that copyright to satisfy 17 U.S.C. § 10. Because of the continuous nature of the composite design printed on Kolbe's fabric there are conceptual difficulties inherent in determining the limits of the protected "work", and the number of "copies" thereof contained in a bolt of the printed fabric.

In satisfaction of the registration requirements of 17 U.S.C. § 13, Kolbe deposited with the Register of Copyrights two swatches of printed fabric, each of which was of bolt width and approximately one yard long. If these deposited "copies" define the scope of the protected work, it is clear that plaintiff complied with the requirements of the statute by repeating its notice of copyright every 16 inches along the length of its printed fabric. We recognize, however, that to permit the scope of a protected textile design to turn upon the size of the copy deposited by the copyright proprietor "would mean that a single notice, if sufficiently legible, would suffice for the whole bolt * * * if this were what an owner purported to copyright." H. M. Kolbe Co. v. Armgus Textile Co., supra, 279 F.2d at 557 (dissenting opinion). In the case of continuous textile designs, therefore, we view the officially-deposited "copy" as setting no more than an outer limit within which published copies must bear the statutory notice. See Dejonge & Co. v. Breuker & Kessler Co., 235 U.S. 33, 35 S.Ct. 6, 59 L.Ed. 113 (1914). Two additional considerations, however, establish to our satisfaction that within that outer limit the statutory requirements have been fully met for each published copy of Kolbe's composite design.

1. From the trial record it appears that patterned textiles of the kind in suit are printed by a single roller which embodies the master pattern and transfers it, through continuous revolutions, to the unmarked fabric. An examination of the printed Kolbe fabric offered as an exhibit below reveals that the basic pattern, as thus defined, is repeated every 16 inches throughout the length of the material. As the notice of copyright is itself printed by the master roller, it, too, is repeated and appears at least once for each repetition of the basic design.

2. By the enactment of 17 U.S.C. § 10, Congress sought to minimize the likelihood of innocent infringement by insuring that each purchaser of a protected work would be alerted to the existence of the copyright claims. See Stecher Lithographic Co. v. Dunston Lithograph Co., 233 F. 601, 603 (D.C.); Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406, 409 (2 Cir., 1947), cert. denied, 331 U.S. 820, 67 S.Ct. 1310, 91 L.Ed. 1837. Textiles are normally sold by the bolt at wholesale, in units of a yard at retail. By repeating its notice of copyright every 16 inches down the length of its printed fabric, therefore, Kolbe affixed at least one statutory notice to each smallest commercial unit by which its product is normally sold. No other practicable arrangement of copyright notices would better have warned defendants below, or other potential infringers, of Kolbe's claim. See Boucher v. Du Boyes, Inc., 253 F.2d 948 (2 Cir., 1958); Scarves v. Vera, Inc. v. United Merchants and Manufacturers, Inc., 173 F. Supp. 625 (S.D.N.Y.1959).

We hold that plaintiff did not forfeit its copyright by the manner in which it affixed notices thereof on fabrics of its own production.

Appellants advance a second argument in support of their contention that plaintiff below has forfeited its copyright upon the textile design in suit. Again the alleged cause of forfeiture is failure to mark copies of the design with notices of copyright. This argument, however, is not concerned with alleged lack of notice upon the Kolbe fabric, but with the distribution of fabric unauthorizedly produced by appellants.

At the commencement of the present suit, according to testimony adduced at trial, fabric bearing Kolbe's design, but manufactured and sold by appellant, Happy Cottons, Inc., was in the hands of several garment manufacturers, some of whom were joined as party defendants to the action. The fabric did not, of course, bear any notice of Kolbe's copyright. With a view to settling any disputes arising from this discovery and of eliminating further infringing distributions officers of Kolbe subsequently entered into negotiations with two of these...