Peter Pan Fabrics, Inc. v. Dixon Textile Corporation

• Decision Date: 30 March 1960
• Docket Number: No. 213,Docket 25935.,213
• Citation: 280 F.2d 800
• Parties: PETER PAN FABRICS, INC. and Henry Glass & Co., Plaintiffs-Appellants, v. DIXON TEXTILE CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

280 F.2d 800 (1960)

PETER PAN FABRICS, INC. and Henry Glass & Co., Plaintiffs-Appellants, v. DIXON TEXTILE CORPORATION, Defendant-Appellee.

No. 213, Docket 25935.

United States Court of Appeals Second Circuit.

Argued February 11, 1960.

Decided March 30, 1960.

On Application for Hearing May 18, 1960.

Bernard A. Helfat, Helfat & Helfat, New York City (J. Nathan Helfat, New York City, on the brief), for plaintiffs-appellants.

Harry Price, New York City (Samuel Jaffe, New York City, on the brief), for defendant-appellee.

Before MOORE, Circuit Judge, and SMITH and HERLANDS, District Judges.

On Application for Hearing In Banc May 18, 1960.

J. JOSEPH SMITH, District Judge.

Plaintiffs sued for infringement of copyright on an ornamental design, known as "Byzantium," printed upon textiles. A preliminary injunction against copying was granted, and plaintiffs moved, with supporting affidavits, for summary judgment to encompass a permanent injunction against copying and reference to a master for determination of damages. Judge Levet denied summary judgment on the ground that the finding of originality in the order granting a preliminary injunction was not determinative and that the affidavit submitted in support of the motion is insufficient to dispose of this issue prior to trial. A motion for rehearing was denied without opinion.

Defendant-appellee contends that the orders denying summary judgment are not appealable because not final; appellant that they are appealable as orders denying injunctions. 28 U.S.C. § 1292(1). The matter is settled in this circuit in favor of appealability by Raylite Electric Corp. v. Noma Electric Corp., 2 Cir., 1948, 170 F.2d 914, Federal Glass Co. v. Loshin, 2 Cir., 1954, 217 F. 2d 936, and United States v. New York N. H. & H. R. R. Co. et al. (Glenmore et al. v. Ahern et al.), 2 Cir., 276 F.2d 525, with which my brothers are in accord. Were the matter one of first instance in this circuit the writer would incline to the view that they are not appealable, for they are clearly interlocutory in nature, involving a pre-trial order as to issues to be tried. This is the view of the third circuit. Hook v. Hook & Ackerman, Inc., 3 Cir., 1954, 213 F.2d 122; Morganstern Chemical Co. v. Schering Corp., 3 Cir., 1950, 181 F.2d 160; 6 Moore Federal Practice, 2nd Ed., p. 2321, and see dissenting opinion of Judge Clark in Federal Glass Co., v. Loshin, 2 Cir., 1954, 217 F.2d 936, 938, and the views of Judges Clark and Medina, Federal Glass Co. v. Loshin, 2 Cir., 1955, 224 F.2d 100, 101. We proceed to consideration of the merits.

Concededly, the finding on the issue of originality was not concluded by the ruling on the ex parte motion for preliminary injunction. However, when the motion for summary judgment, with accompanying affidavits, placed before the court a state of facts, which, uncontradicted in any material respect, required a finding of originality, trial of the issue was not required, and summary judgment should not have been denied on that ground. The plaintiffs had engaged a Parisian designer to design from rough sketches furnished him a design Byzantine in motif. This design plaintiffs registered as a reproduction of a work of art under 17 U.S.C. § 5(h), for which the Copyright Office issued Certificate H 7290. The design was printed on goods with the copyright notice repeated on the selvage every 19 inches, and the goods were sold to dress manufacturers. While the basis of the sketches appears to have been suggested by or perhaps taken faithfully from ancient art forms, their incorporation into a combined design by the Parisian designer is clearly sufficiently original to satisfy the originality requirement of the copyright law. See Alfred Bell & Co., Ltd. v. Catalda Fine Arts Inc., 2 Cir., 1951, 191 F.2d 99. (Mezzotint engravings of old masterpieces, paintings in the public domain, proper subjects of copyright.) Originality, not novelty, is the test. Fred Fisher, Inc. v. Dillingham, D.C.S.D.N.Y. 1924, 298 F. 145. There was no genuine issue as to any facts material to the question of originality.

Defendant contends that besides originality there were three other genuine factual issues raised by the pleadings and affidavits which were not reached by Judge Levet in view of his ruling on originality. These were failure to comply with the notice requirement of the copyright law, 17 U.S.C. § 10, whether the defendant in fact copied plaintiffs' design or developed a similar design independently, and damages. There appears to be no issue of fact as to the printing of the notice on the selvage, and its legal sufficiency has been upheld in Peter Pan Fabrics, Inc. v. Martin Weiner Co., 2 Cir., 274 F.2d 487, 490, in the absence of showing that notice could have been embodied in the design without impairing its market value.

Since Judge Levet did not consider other issues in view of his ruling on the issue of originality, no finding was made as to whether notice could have been applied to the dresses or embodied in the design without impairing its market value. Publication under the Martin Weiner Corp. case, supra, is considered to have occurred on sale of the printed goods to the dress manufacturers, and notice at that time is to be held constructive notice to all dress manufacturers, provided the notice was sufficient. In that event, a copier acts at his peril if he takes the design from a finished dress. Such a result may well be considered necessary to carry out the Congressional intent to give copyright protection to reproductions on textiles of works of art. Weiner teaches that absence of notice is a defense, with the burden on the copyist to show it could have been embodied in the design without impairing its market value. "In the case of a deliberate copyist, * * * the absence of `notice' is a defence that the copyist must prove, and * * * the burden is on him to show that `notice' could have been embodied in the design without impairing its market value." L. Hand, J. in Peter Pan v. Martin Weiner. It does not appear likely that defendant in the case at bar can show that notice could have been embodied in the design without impairing its market value, but there is nothing in the pleadings or plaintiffs' affidavits on this issue. The status of the Weiner case is such that the question of whether "notice" could have been embodied in the design without impairing its market value remains open for proof in the proceeding for permanent injunction and other relief. In the case at bar, permanent injunction and damages are sought by the motion for summary judgment. The Feerst affidavit alleges lack of notice. The possibility of embodying notice in the design has not been otherwise raised or disposed of on the pleadings or affidavits. The issue remains open for proof.

The next remaining issue, that of copying, also presents difficulty, since the affidavit of Feerst, dated August 14, 1959, in opposition to the motion, contains the following language:

"I am familiar with the process by which defendant initiated, developed and carried out its design. I state categorically that it was not a copy, in whole or in part, of the expression in the plaintiffs\' design.

"I further state categorically, and will prove on the trial, that the defendant\'s design was the product of the defendant\'s independent work, and in no way involved any, let alone substantial, appropriation of plaintiffs\' copyright.

"There are innumberable examples of this type of design, available freely to all in various sources, including many source books in the public domain.

* * * * * *

"Defendant in fact was an innocent party and the design and similar designs were common on the market during the latter part of 1958 and it would not appear that there is any liability that would warrant either a summary judgment procedure or reference to a master.

"In respect to the Kabro dress, this dress was devoid of notice and although the same theme may have been applied to defendants\' fabric as in this Kabro dress, it was an original with defendant."

There was, however, in Wilner's affidavit the following:

"I am advised by plaintiffs\' attorneys, Helfat and Helfat, Esqs., 32 Broadway, New York 4, New York, that in the course of the deposition of Martin G. Feerst, defendant\'s president, taken on June 8, 1959, defendant admitted that it was the manufacturer of the textile annexed to the complaint as Exhibit 2; that defendant manufactured or caused to be manufactured a total of 69,500 yards of the said textile; that of said 69,500 yards, all but 8,900 yards were sold by it between November 3, 1958 and November 20, 1959; that the idea for and the inspiration of the design printed on defendant\'s said textiles was a dress purchased from the

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