Lauratex Textile Corp. v. Allton Knitting Mills Inc., 80 Civ. 1101 (MEL).

• Decision Date: 15 May 1981
• Docket Number: No. 80 Civ. 1101 (MEL).,80 Civ. 1101 (MEL).
• Citation: 517 F. Supp. 900
• Parties: LAURATEX TEXTILE CORP., Plaintiff, v. ALLTON KNITTING MILLS INC. and Martin Levine, Defendants.
• Court: U.S. District Court — Southern District of New York

517 F. Supp. 900

LAURATEX TEXTILE CORP., Plaintiff, v. ALLTON KNITTING MILLS INC. and Martin Levine, Defendants.

No. 80 Civ. 1101 (MEL).

United States District Court, S. D. New York.

May 15, 1981.

COPYRIGHT MATERIAL OMITTED

Helfat & Helfat, New York City, for plaintiff; Bernard A. Helfat, New York City, of counsel.

Fogel, Kamhi & Spiegler, P. C., New York City, for defendants; Martin Fogel, New York City, of counsel.

LASKER, District Judge.

Lauratex Textile Corp. is a textile converter, which prepares and produces new designs for printing on fabric sold to garment manufacturers. Lauratex sues Allton Knitting Mills, Inc., another textile converter, and its president and operating head, Martin Levine, for allegedly copying Lauratex's design known as "Pattern # 36790 Show-Off" (Plaintiff's Exhibit 3).

Allton contends that its pattern (Plaintiff's Exhibit 8) is "vastly different," that Lauratex's design is not original, and even if it was, that Allton's design is original and not copied from Pattern # 36790.

A. Originality of Lauratex's Design

The uncontroverted facts established at trial clearly demonstrate that Lauratex is the registered owner of a copyright in Pattern # 36790 and that the design is an original work.

Jerry Sander, the director of Lauratex's art department, testified that he bought the original sketch (Plaintiff's Exhibit 1) from the Farkas-Ortenzi design studio in Como, Italy and then supervised the translation of the sketch into a design suitable for repeat printing on fabric. The design was first published on July 25, 1978 with a notice of copyright on the selvage. Lauratex applied for a copyright for this design on February 11, 1980, and one was issued on February 12, 1980.¹ (Plaintiff's Exhibit 4).

B. Originality of Allton's Design

In Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960), the Second Circuit, affirming the grant of a preliminary injunction prohibiting the defendant from copying plaintiff's design, stated that the aesthetic appeal of the design in question is determinative of copyright infringement of a fabric design and that differences in detail which do not affect the overall appearance of the fabric do not negate infringement.

"In the case of designs, which are addressed to the aesthetic sensibilities of an observer, the test is, if possible, even more intangible than in the case of verbal works. No one disputes that the copyright extends beyond a photographic reproduction of the design, but one cannot say how far an imitator must depart from an undeviating reproduction to escape infringement. In deciding that question one should consider the uses for which the design is intended, especially the scrutiny that observers will give to it as used. In the case at bar we must try to estimate how far its overall appearance will determine its aesthetic appeal when the cloth is made into a garment. Both designs have the same general color, and the arches, scrolls, rows of symbols, etc. on one resemble those on the other though they are not identical. Moreover, the patterns in which these figures are distributed to make up the design as a whole are not identical. However, the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same. That is enough; and indeed, it is all that can be said, unless protection against infringement is to be denied because of variants irrelevant to the purpose for which the design is intended."

Id. at 489. Accord Malden Mills, Inc. v. Regency Mills, Inc., 626 F.2d 1112 (2d Cir. 1980).

From an examination of the Lauratex and Allton designs, we find that their overall effect is identical, and that an ordinary observer of garments made out of fabric printed with those designs who was not searching for their differences would conclude that they are the same design. Both designs are floral prints on a white background bordered by a narrower stripe containing another design. Both use precisely the same color combinations in the same balance of colors.² In both, the flowers are the same size and are clustered in the same manner. There are more flowers in deeper colors near the border and in both the flowers "trickle" out into a lower concentration and in lighter colors as they move away from the border. In the same area in which the flowers trickle out, there appear vines which alternate in the same two colors and have leaves attached to them in the same colors and occasionally in green. Both border designs contain a scroll-like curl which is repeated.

It is true that the designs are not identical. The flowers are shaped differently, the Allton design has more white per area unit than does the Lauratex design, and the borders contain different designs other than the scroll shape mentioned earlier. However, these changes in detail do not alter the overall effect which to an ordinary observer would appear to be identical to that of the Lauratex design.

Accordingly, we find that the Allton design was copied from the Lauratex Pattern # 36790 and that Allton has infringed Lauratex's copyright in that pattern.

C. Relief

Lauratex's motion for a permanent injunction prohibiting defendants from copying Pattern # 36790 is granted.

Lauratex argues that damages should be assessed according to its own profit margin and Allton's sales of the infringing design. However, no evidence as to Allton's sales was introduced, although there was evidence generally establishing Lauratex's profit on this design.³ Accordingly, it cannot be determined how much actual damage occurred to Lauratex as a result of Allton's infringement.

Lauratex also seeks $50,000. in statutory damages under 17 U.S.C. § 504(c)(2), which provides in relevant part:

"In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $50,000."

We agree that statutory damages are appropriate in this case, not only because actual damages are difficult of ascertainment, see, e. g., Lottie Joplin Thomas Trust v. Crown Publishers, Inc., 592 F.2d 651, 657 (2d Cir. 1978); Peter Pan Fabrics, Inc. v. Jobela Fabrics, Inc., 329 F.2d 194, 196 (2d Cir. 1964), but because the copying here was willfully performed by the defendants. Moreover, it appears that Levine, through other of his corporations, has been a defendant to copyright infringement suits brought by converters ten times (including this action) in the last five years. Five of those actions were settled, two are still pending and two resulted in judgments in favor of the plaintiffs.⁴ The inference is inescapable that Levine has made a practice of copying the designs of other converters, and that an award of statutory damages is...