Langman Fabrics, a div. of Blocks Fashion Fabrics, Inc. v. Graff Californiawear, Inc.

• Decision Date: 09 November 1998
• Docket Number: D,No. 1269,1269
• Citation: 160 F.3d 106
• Parties: 1998 Copr.L.Dec. P 27,836, 48 U.S.P.Q.2d 1658 LANGMAN FABRICS, a division of Blocks Fashion Fabrics, Inc. Plaintiff-Counter-Defendant-Appellant, v. GRAFF CALIFORNIAWEAR, INC., Arizona Mail Order Company, Inc., Defendants-Counter-Claimants, Fashion Initiatives, Defendant-Counter-Claimant-Appellee, Samsung America Inc., Defendant-Appellee. ocket 97-7930.
• Court: U.S. Court of Appeals — Second Circuit

Page 106

160 F.3d 106

1998 Copr.L.Dec. P 27,836, 48 U.S.P.Q.2d 1658

LANGMAN FABRICS, a division of Blocks Fashion Fabrics, Inc. Plaintiff-Counter-Defendant-Appellant, v. GRAFF CALIFORNIAWEAR, INC., Arizona Mail Order Company, Inc., Defendants-Counter-Claimants, Fashion Initiatives, Defendant-Counter-Claimant-Appellee, Samsung America Inc., Defendant-Appellee.

No. 1269, Docket 97-7930.

United States Court of Appeals, Second Circuit.

Argued March 18, 1998.

Decided Nov. 9, 1998.

John P. Bostany, New York, N.Y. (The Bostany Law Firm, on the brief), for Plaintiff-Counter-Defendant-Appellant.

Thomas Catalano, New York, N.Y. (Steven B. Prystowsky, Lester, Schwab, Katz & Dwyer, on the brief), for Defendant-Counter-Claimant-Appellee.

Ira N. Glauber, New York, N.Y. (Jaffe & Asher, on the brief), for Defendant-Appellee.

Before: JACOBS, LEVAL, and GIBSON, ^* Circuit Judges.

JOHN R. GIBSON, Circuit Judge.

Langman Fabrics appeals from the summary judgment entered against it in the United States District Court for the Southern District of New York (Baer, J.) in its copyright infringement suit against Fashion Initiatives, Inc. and Samsung America, Inc. Langman Fabrics claims that the defendants copied its plume design for fabric, which was registered under the Copyright Act of 1976, 17 U.S.C. § 201(b) (1994). ¹ The district court held that Aaron Langman made concessions in his deposition fatal to Langman Fabrics' case and that his later elaborations on his earlier testimony could not raise genuine issues of material fact sufficient to show either that Langman Fabrics owned the copyright under the work-for-hire provision or that Aaron Langman was the author or joint author. Langman Fabrics v. Samsung America, Inc., 967 F.Supp. 131, 133-34 (S.D.N.Y.1997). The district court also held that even if Langman Fabrics had owned the copyright, it forfeited the copyright by failing to include the year of first publication in the copyright notice. Id. at 135. We reverse and remand.

Langman Fabrics is a converter of textiles, meaning that it converts greige goods (raw cloth) into finished solid or printed fabrics to sell to clothing manufacturers. Langman Fabrics is an unincorporated two-person operation; ² Aaron Langman performs the creative functions of creating and obtaining fabric designs, and Gerald Block handles the financial aspects of the business.

On December 7, 1984, Langman Fabrics filed a copyright registration certificate with the United States Copyright Office for "Pattern # L-303 Plume," a design for textiles, as a "work made for hire" with a first publication date of July 1, 1984. Langman Fabrics printed fabric with the design bearing the copyright notice: "COPYRIGHT LANGMAN FABRICS."

Fashion Initiatives' catalog of available prints included the feather pattern that Langman Fabrics contends is copied from Langman's design. On December 8, 1995, a clothing manufacturer placed an order with Fashion Initiatives for 3,000 yards of the fabric. Fashion Initiatives in turn ordered the fabric from Samsung, a fabric broker, which ordered the fabric from E-Star, a Korean manufacturer. Samsung arranged to import the fabric into the United States.

Langman Fabrics filed this copyright infringement suit against Fashion Initiatives and Samsung America. ³

Aaron Langman initially gave a deposition describing briefly how the plume design was created. He created it with a freelance artist working with him, and asked her to do a feather pattern similar to what the Three Musketeers wore in their hats with a soft, flowing, moving feathery pattern. She did a painting which he was not quite satisfied with. He made verbal, face-to-face corrections. He wanted the feathers finer and brought in a little more, and the repeat not to be overbearing, and he wanted certain colorings. He does not know how to draw. The artist made the corrections and Langman sent the design to Japan for printing. Langman stated that the artist was not an employee of Langman Fabrics.

After this deposition, and relying on it, Fashion Initiatives and Samsung filed their summary judgment motion arguing that Langman Fabrics was not entitled to ownership of the copyright under the work-for-hire provision, because Aaron Langman had admitted that the young woman who painted the design was a freelance artist and not an employee of Langman Fabrics. They also argued Langman forfeited its copyright by its failure to reproduce the first year of publication on its copyright notice, in accordance with 17 U.S.C. § 401(b)(1994).

Langman Fabrics responded to the motion by filing an affidavit by Aaron Langman directed to the work-for-hire issue. He stated that the freelance artist worked with him on many other designs that Langman Fabrics created in 1984. She was not an artist in her own right, but a form of creative talent that was used to create a line of patterns and designs to be sold by Langman Fabrics to its customers. She reported for work every day and conducted all of her work at Langman Fabrics. She was a temporary employee providing short term support. As was customary, she would be paid for the work done and all property rights to the design would remain the property of Langman Fabrics. Typically, according to Aaron Langman's affidavit, these assistants are students or recent graduates of design schools, and the fabric industry does not consider them owners of the intellectual property rights to designs that they work on. Aaron Langman personally supervised the assistant on a regular and continuous basis on the design specification, the elements of the patterns, and the colors. He was the originator of the idea and translated the idea into a fixed tangible expression through his stylist.

The district court declined to rule on the summary judgment motion because it did not consider the record before it adequate to resolve the work-for-hire question. The court stated, "[M]ore information along the lines set out in Aymes v. Bonelli, 980 F.2d 857 (2d Cir.1992), and other cases, particularly information with respect to employee benefits and tax treatment, is necessary." Langman Fabrics v. Samsung America, Inc., 967 F.Supp. 131 (S.D.N.Y.1997).

Accordingly, Aaron Langman was deposed a second time and testified at greater length on the circumstances under which the plume design was created. Aaron Langman produced a feather, which he said he had purchased in 1984, but had misplaced until he happened to come across it by coincidence shortly before his deposition.

He had the idea to create an airy, plume type of feather like the ostrich feathers in the hats in the movie The Three Musketeers. He wanted to create a pattern that was commercially feasible from that type of look. He played around with feathers on paper, laying them out in a manner that would be commercially feasible, and asked the artist to do a pencil drawing the way he laid them out. He made copies on the photocopier and played around with cutting out the feathers and laying them on a paper to approximate the look he wanted. He instructed the artist to bring the feathers closer together for the fine lines to overlap other feathers, because he didn't want too much space showing. He practically stood over the assistant because he wanted a certain look and a certain feeling. Of the four hours she spent on the pencil drawing, he stood over her for two of them. He instructed her to make further corrections to the drawing. After the drawing he picked colors from Japanese silk books that contained over 500 colors, and cut off little tabs and told her to do the colorings in one feather or the other. He wanted off-white, he wanted to reverse the fuschia with jade, he wanted a navy background, and he wanted the colors to be balanced. The artist was paid twenty-five dollars a day and while Langman thought she did not receive employee benefits or have taxes withheld, Gerald Block who handled the business aspects, testified that she received normal business benefits, whether disability or workmen's compensation, and FICA, and income taxes were deducted from her pay. She did not receive medical benefits.

After the supplemental discovery, the district court entered summary judgment for the defendants. The court held that, applying the work-for-hire criteria set out in Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989), and Aymes v. Bonelli, 980 F.2d 857 (2d Cir.1992), Langman Fabrics was not the author of the fabric design, because the artist who painted the design was an independent contractor, rather than an employee of Langman Fabrics. Langman Fabrics, 967 F.Supp. at 133-35. The first Reid criterion, the extent of the hiring party's control over the manner and means of creation, differed according to whether the court took the facts from Aaron Langman's first deposition or the second, expanded deposition. The district court held that the second deposition "depart[ed] radically" from his earlier testimony. Id. at 133. The court therefore refused to recognize the account in Langman's second deposition. Id. at 133-34. The court held that while Langman exercised some control over the artist, the other Reid criteria weighed in favor of treating her as an independent contractor. Id. at 134. Specifically, the court emphasized the level of skill required for the task the artist performed and the testimony that she received no medical or other employee benefits, such as vacation or sick leave. Id. The court did not accept Block's testimony that he withheld taxes from the artist's pay, since Langman Fabrics did not produce any documentary evidence substantiating this testimony. Id.

Alternatively, the court held that Langman Fabrics had failed to preserve its copyright by affixing a proper copyright notice. Langman Fabrics' copyright notice did not include the year of first publication. The court held that the design did not come within the exemption of 17 U.S.C. § 401(b)(2)...