Key West Hand Print Fabrics, Inc. v. Serbin, Inc.

• Decision Date: 15 April 1966
• Docket Number: Civ. No. 64-272.
• Citation: 269 F. Supp. 605
• Parties: KEY WEST HAND PRINT FABRICS, INC., a Florida corporation, Plaintiff, v. SERBIN, INC., an Ohio corporation, Defendant.
• Court: U.S. District Court — Southern District of Florida

269 F. Supp. 605

KEY WEST HAND PRINT FABRICS, INC., a Florida corporation, Plaintiff, v. SERBIN, INC., an Ohio corporation, Defendant.

Civ. No. 64-272.

United States District Court S. D. Florida.

April 15, 1966.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

James L. Guilmartin and Stanley Jay Bartel, of Guilmartin & Bartel, and M. A. Baskin, Miami, Fla., for plaintiff.

Eugene C. Heiman and Richard E. Reckson, of Heiman & Heiman, and Edwin M. Ginsburg, of Myers, Kaplan & Porter, Miami, Fla., for defendant.

OPINION

DYER, Chief Judge.

This action was brought by Key West Hand Print Fabrics, Inc. v. Serbin, Inc. for copyright infringement of fabric designs known as "Bougainvilla," "Zuzek Rose Butter," and "Dragon,"¹ and for unfair competition.

Plaintiff manufactures fabrics by a hand printed silk screen process at its plant in Key West, Florida. The fabrics are displayed and sold in plaintiff's shops in Key West, Florida, and elsewhere, and sold to others who manufacture dresses. Plaintiff also manufactures and sells some dresses and apparel made from its hand printed fabrics.

Lilly Pulitzer, Inc. of Palm Beach, Florida, was plaintiff's largest customer. It purchased silk screen printed fabrics from the plaintiff and had them manufactured into dresses by Gary's Originals, Miami, Florida.

In the early days of the popularity of the Lilly shift dress, Lewis I. Serbin, defendant's Board Chairman, sought out Miss Pulitzer, offered to handle the manufacture of her dresses, had his pattern maker work with her, and arranged to introduce her to his manufacturer, Gary.

Prior to this time, Gary's entire production facilities had been utilized by the defendant for the manufacture of its dresses. In fact, two of defendant's employees, its Vice President and Production Chief, owned a one-half interest in the plant.

At Miss Pulitzer's direction, plaintiff shipped the fabrics purchased by her direct to Gary. The dresses manufactured by Gary included those made up from the copyrighted fabric designs in issue in this case.

The demand for "Lilly's" mushroomed. In March 1963, Serbin and Muriel Ryan, defendant's Vice President and designer, visited plaintiff's plant in Key West and were shown through the retail shop where they examined the fabrics on display, including the copyrighted designs. Serbin indicated a desire to purchase the fabrics and the screens, but plaintiff declined because of its arrangement with Miss Pulitzer.

Thereafter, the infringing fabric designs were made for defendant by C. and J. Ryan Co., a manufacturing establishment operated by the brothers of the defendant's designer. Actually, the defendant had no artists who created fabric designs. It selected fabrics from others for the manufacture of its dresses.

Generally speaking, the plaintiff's designs were created by an artist drawing a pen and ink rendering of a part of a design, using different techniques for different designs, tracing or transferring the designs in different positions onto a transparent acetate, and placing them on the acetate in different ways by shifting the designs from place to place so as to form an interlocking and artistically pleasing complete design or repeat. This was then transferred by a photographic and chemical process to silk screens held in large wooden frames and used to print the cloth. Each frame contained a complete repeat of the design and each repeat had a copyright notice. One silk screen design was combined with another so as to produce an artistic combination of the two designs.

The "Zuzek Rose Butter" rendering was accomplished by an artist drawing the "Zuzek Rose" portion freehand out of her head. Thereafter, a number of additional designs of a similar nature were drawn and photographed. The photographs were then artistically arranged and an acetate made of this portion of the design. Superimposed on the "Zuzek Rose" portion of the design were butterflies added in an artistic arrangement.

The "Dragon" design was rendered by a freehand drawing of a dragonfly and a dragon followed by marbleizing on the original design (accomplished by soaking the paper in water and then carefully drawing with India ink the design on the wet paper to give the effect of marble) and additional artistic work on the acetates.

When these composite designs were hand printed on the fabric, they were sufficiently original in creation and arrangement for copyright protection within the purview of Title 17 U.S.C.A. § 7. H. M. Kolbe Co., Inc. v. Armgus Textile Company, Inc., 2 Cir. 1963, 315 F.2d 70, 99 A.L.R.2d 390; Dan Kasoff, Inc. v. Novelty Jewelry Co., Inc., et al., 2 Cir. 1962, 309 F.2d 745; and Peter Pan Fabrics, Inc. v. Dixon Textile Corporation, 2 Cir. 1960, 280 F.2d 800.

During the process of manufacturing, plaintiff placed the statutory notice of copyright on each repeat of the fabric design approximately every 30 inches on the selvage. Defendant takes the position that this was insufficient; that the notice could have been embodied in the design without impairing its market value or its aesthetic appeal; and since the selvage was customarily removed when the goods were cut, there was lack of statutory notice. The experts (including the defendant's), as well as the physical evidence, do not support this assertion.

While it is not unusual for a dress manufacturer to insert his name into a design, and some well known in the retail trade do it particularly for "snob appeal" ("Mr. Dino," "Pucci," "Vera," etc.), it is not feasible for the printer or converter of the cloth to do so. He sells his product by the bolt, or some equivalent, to the manufacturer and not the public. The manufacturer wants to promote his name, not that of the printer who is unknown to the public. It can hardly be seriously contended that "Dino" or "Pucci" (or any other manufacturer) would accept cloth with the name "Key West Hand Print Fabrics, Inc." and a copyright mark worked into the design if they intended to make it into dresses to be sold to the public.

The defendant had the burden of proving that the notice of copyright could have been incorporated in the body of the design instead of the selvage. Cortley Fabrics Company Inc. v. Slifka, et al., 138 U.S.P.Q. 110, S.D.N.Y., affirmed per curiam, 2 Cir. 1963, 317 F.2d 924. This it failed to do; and under such circumstances, the placing of the copyright notice on the selvage has been repeatedly approved. Peter Pan Fabrics, Inc. v. Martin Wiener Corp., 2 Cir. 1960, 274 F.2d 487; Peter Pan Fabrics, Inc. v. Dixon Textile Corp., supra; Peter Pan Fabrics, Inc. v. Puritan Dress Co., Inc., S.D.N.Y.1962, 207 F.Supp. 563.

After the renderings of "Zuzek Rose Butter" and "Dragon" had been prepared in late 1962, Miss Pulitzer, while on a visit to Key West, was shown them so she could determine whether the original designs would work out well on the cloth before they were printed.

In November 1962, "Zuzek Rose Butter" and "Dragon" were published by being imprinted on cloth with the statutory mark and sold to Lilly Pulitzer and others. The evidence simply does not bear out the contention of the defendant that any of the material was sold without the mark.

The defendant, however, makes a further double thrust: first, that the demonstration of the original drawing of the work which was ultimately copyrighted to a prospective purchaser for the purpose of inducing that purchaser to buy material imprinted with the design was a publication within the meaning of the Act; and second, that the publication of the design in a promotional magazine article utilized as an advertisement by the manufacturer of dresses imprinted with the design with the knowledge and encouragement of the copyright holder, without the statutory mark, was a dedication of the design to the public.

The short answer to the first contention is that the renderings (and this is what was shown) are not a publication and a notice on them was not required, Title 17 U.S.C.A. § 26. Furthermore, they were not even the complete design.

In any event, under the circumstances here shown, the exhibition of the renderings to Miss Pulitzer to get her opinion or reaction was not a publication resulting in a dedication of the expression of the idea to the public. Even a limited distribution of copyrighted material to prospective purchasers for sales purposes has been held not to affect a forfeiture. Burnett v. Lambino, S.D.N. Y. 1962, 204 F.Supp. 327.

On February 8, 1963, an article appeared in Life Magazine which contained pictures of Lilly Pulitzer's shift dresses, and which were in part identified as being made from the plaintiff's copyrighted designs. No doubt the plaintiff cooperated with Miss Pulitzer in connection with the Life article. It was a good promotional scheme. It succeeded for Lilly and it enhanced the plaintiff's sales. The fact remains, however, that all of the plaintiff's material was printed with the copyright notice beginning with that which first left the factory. Of course, once there was a publication of the goods with the copyright notice, plaintiff did not have subsequent control over the goods. Here the material was sold to Miss Pulitzer, who had it made into dresses and had it photographed for Life Magazine. Plaintiff's "cooperation" did not require it to insist that the statutory mark be displayed in the photographs used by Life.

Relying on Title 17 U.S.C.A. § 13,² defendant insists that the plaintiff's delay in complying with the Act's requirements and alleged misstatements in the application invalidate the copyrights.

In November 1962, both "Dragon" and "Zuzek Rose Butter" were published. The original publication date, stated in the application to have been December 31, 1962, was in error. There was no showing, however, that this was other than an innocent misstatement, unaccompanied by fraud or intent to extend the statutory period of copyright protection and does not, therefore, invalidate the copyright....