Novelty Textile Mills, Inc. v. Joan Fabrics Corp.

• Citation: 558 F.2d 1090
• Decision Date: 12 July 1977
• Docket Number: No. 998,D,998
• Parties: NOVELTY TEXTILE MILLS, INC., Plaintiff-Appellant, v. JOAN FABRICS CORPORATION, Defendant-Appellee. ocket 77-7067.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

Page 1090

558 F.2d 1090

195 U.S.P.Q. 1

NOVELTY TEXTILE MILLS, INC., Plaintiff-Appellant, v. JOAN FABRICS CORPORATION, Defendant-Appellee.

No. 998, Docket 77-7067.

United States Court of Appeals Second Circuit.

Argued March 29, 1977.

Decided July 12, 1977.

James K. Silberman, New York City (Blum, Moscovitz, Friedman & Kaplan, New York City, of counsel), for plaintiff-appellant.

Floyd A. Gibson, Charlotte, N. C. (Joell T. Turner and Bell, Seltzer, Park & Gibson, Charlotte, N. C., and Michael Malina, Ettie Ward and Kaye, Scholer, Fierman, Hays & Handler, New York City, of counsel), for defendant-appellee.

Before MANSFIELD and GURFEIN, Circuit Judges, and NEWMAN, District Judge. ^*

GURFEIN, Circuit Judge:

This is an appeal from an order of the District Court for the Southern District of New York (Werker, D. J.) denying plaintiff's motion for a preliminary injunction against the continued use by defendant of a fabric design which it allegedly copied from plaintiff's fabric design. The complaint charges copyright infringement under 17 U.S.C. §§ 101, 112 and 116 and seeks a permanent injunction, impoundment and destruction of the allegedly infringing copies, and damages. Jurisdiction is based on 28 U.S.C. § 1338(a).

I

The basic facts as found by the court below are not in dispute. Plaintiff Novelty Textile Mills, Inc. ("Novelty") and defendant Joan Fabrics Corporation ("Joan") both manufacture upholstery fabrics which they sell in competition with each other to furniture manufacturers. Novelty created Style 253 during the latter part of 1975 and copyrighted it. It was first displayed to the trade in January, 1976. The fabric sold well and was delivered to furniture manufacturers in commercial quantities beginning in March, 1976. Several manufacturers exhibited display models of their furniture, upholstered with Style 253 fabric, at a regional furniture trade market held in April, 1976 at High Point, North Carolina. At that time both the sales and design personnel of defendant Joan viewed plaintiff's Style 253 and learned that there was a substantial demand for this type of design, known as "bias" or "argyle" plaid, among its customers.

Joan's management thereafter determined that it too should offer a collection of bias plaid upholstery fabrics. Its designers were instructed to make such a collection and were told "to avoid any infringement of fabrics manufactured by others." Subsequently five bias plaid designs were made by its designers and used in the manufacture of Joan's fabrics.

After the introduction of these Joan fabric designs, the sales of Novelty's Style 253 declined precipitously. The president of Novelty testified that its continuing loss in sales amounted to approximately $11,000 per week. He attributed this loss to the introduction of the Joan designs.

Within two months Novelty instituted this lawsuit and moved for a preliminary injunction. The District Court after an evidentiary hearing, as noted, denied the motion. This appeal followed.

II

In order to prove infringement a plaintiff must show ownership of a valid copyright and copying by the defendant. See 2 M. Nimmer, Nimmer on Copyright § 141 at 611 (1976) ("Nimmer "). Novelty's ownership and the validity of its copyright are not disputed for the purpose of this motion. ¹ This leaves the issue of whether Joan copied Novelty's design. Since direct evidence of copying is rarely, if ever, available, a plaintiff may prove copying by showing access and "substantial similarity" of the two works. See, e. g., Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946); Whitney v. Ross Jungnickel, Inc., 179 F.Supp. 751, 753 (S.D.N.Y.1960), 2 Nimmer, supra, § 141.2 at 613. Here Joan not only admits access, but also the actual viewing by its designers of Novelty's Style 253 before its own designs were produced. ²

The District Court found, however, that there was no substantial similarity because certain differences in the works "would be apparent to a furniture manufacturer, or for that matter to a consumer seriously contemplating purchase of a couch covered with one or another of the fabrics."

" Substantial similarity" is to be determined by the "ordinary observer" test. ³ Judge Learned Hand in defining this test stated there is substantial similarity where "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." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). More recently this court formulated the test as "whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966). And, of course, by definition "(t)he copying need not be of every detail so long as the copy is substantially similar to the copyrighted work." Comptone Co. v. Rayex Corp.,251 F.2d 487, 488 (2d Cir. 1958); United Merchants & Manufacturers, Inc. v. K. Gimbel Accessories, Inc., 294 F.Supp. 151, 154 (S.D.N.Y.1968). ⁴

We have viewed the fabrics presented in the District Court. While it is true that "(t)he test for infringement of a copyright is of necessity vague", Peter Pan Fabrics, Inc. v. Martin Weiner Corp., supra, 274 F.2d at 489, it is clear to us that Joan's Fleetwood Spice is "substantially similar" to Novelty's Cane 253 and, in fact, to our "lay" eyes, is almost identical. ⁵ And "(a)s we have before us the same record, and as no part of the decision below turned on credibility, we are in as good a position to determine the question as is the district court." Concord Fabrics, Inc. v. Marcus Bros. Textile Corp., 409 F.2d 1315, 1317 (2d Cir. 1969). We conclude that plaintiff has established a prima facie case of infringement as to Fleetwood Spice.

Plaintiff has also alleged that other Joan Fabrics infringe Style 253. The District Court, after determining that the two above fabrics (which were thought to present plaintiff's best case) were not substantially similar, did not make individual findings with regard to these other fabrics. In light of our determination, we remand for consideration of whether these other fabrics are also substantially similar to Style 253. ⁶

The question remains whether Novelty is entitled to a preliminary injunction with respect to Fleetwood Spice or other Joan fabrics which the District Court on remand may find to be substantially similar to Style 253. In Houghton Mifflin Co. v. Stackpole Sons, Inc., 104 F.2d 306, 307 (2d Cir.), cert. denied, 308 U.S. 597, 60 S.Ct. 131, 84 L.Ed. 499 (1939), this court stated that "it is settled in copyright cases that, if the plaintiff makes a prima facie showing of his right, a preliminary injunction should issue." See also Rushton v. Vitale, 218 F.2d 434, 436 (2d Cir. 1955). Much later in another fabric design case we stated that "(a)n injunction pending the outcome of trial . . . should issue if plaintiff can show a reasonable probability of prevailing on the merits." Concord Fabrics, Inc. v. Marcus Bros. Textile Corp., supra, 409 F.2d at 1317. And recently Chief Judge (then Judge) Kaufman in Robert Stigwood Group Ltd. v. Sperber, 457 F.2d 50, 55 (2d Cir. 1972), reaffirmed the statement made in American Metropolitan Enterprises of New York, Inc. v. Warner Bros. Records, Inc., 389 F.2d 903, 905 (2d Cir. 1968), that:

"(a) copyright holder in the ordinary case may be presumed to suffer irreparable harm when his right to the exclusive use of the copyrighted material is invaded."

Here there is not even a need for a presumption of harm because the undisputed evidence shows that after the introduction of Joan's fabrics into the market, Novelty's sales declined by $11,000 a week. Consequently, we think that more than a sufficient showing has been made to require the issuance of a preliminary injunction.

For the foregoing reasons, we reverse the order of the District Court and remand for the issuance of an injunction with respect to Fleetwood Spice and a determination of whether the other Joan fabrics alleged to infringe Style 253 are "substantially similar," and therefore, on the facts of this case, should also be preliminarily enjoined.

Reversed and remanded with instructions.

MANSFIELD, Circuit Judge (concurring and dissenting):

I concur in Judge Gurfein's carefully reasoned opinion, except for its remand of a portion of the case to the district court to determine whether color is an ingredient of the copyright and to dispose of the balance of the infringement claims. In my view the color scheme should be treated as one of the elements of the copyrighted design and, since we are in as good a position as the district court to resolve the infringement issue, we should hold that Novelty's Style 253 is not infringed by any of the alleged infringing fabrics produced by Joan other than its "Fleetwood Spice" and "Sand."

The subject of Novelty's Certificate of Copyright is a textile design consisting of an upholstery fabric woven in a common Argyle or bias plaid, using a combination of brown and camel or beige colors on a light background. When the alleged infringing Joan fabrics were laid alongside Novelty's copyrighted design No. 253, "Cane," at a distance of approximately 20 feet in the court, it was readily apparent to ordinary lay observers, i. e., the members of this panel, that Joan's "Fleetwood Spice" and CK-0028 (entitled "Sand"), which were produced after it had access to Novelty's 253, were substantially similar to 253.

Of course all Argyle or bias plaids are somewhat similar, consisting of diamonds in stripes, which may vary in width, shading, spacing, mesh composition, and color. At a distance of 15 feet or more the similarity between Novelty's 253, on the one hand, and the two infringing Joan plaids, on the other, was substantial, not solely because of the shading, spacing, composition, and juxtaposition of the diamonds and stripes, but principally...