Peter Pan Fabrics, Inc. v. Acadia Company

• Citation: 173 F. Supp. 292
• Parties: PETER PAN FABRICS, INC. and Henry Glass & Co., Plaintiffs, v. ACADIA COMPANY, Inc., Defendant. PETER PAN FABRICS, INC., and Henry Glass & Co., Plaintiffs, v. MARTIN WEINER CORP., Defendant.
• Decision Date: 23 March 1959
• Court: U.S. District Court — Southern District of New York

173 F. Supp. 292

PETER PAN FABRICS, INC. and Henry Glass & Co., Plaintiffs, v. ACADIA COMPANY, Inc., Defendant.

PETER PAN FABRICS, INC., and Henry Glass & Co., Plaintiffs, v. MARTIN WEINER CORP., Defendant.

United States District Court S. D. New York.

March 23, 1959.

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

Ruben Schwartz, New York City, for defendant Acadia Company, Inc., Robert W. Adler, New York City, of counsel.

Frederick E. M. Ballon, New York City, for defendant Martin Weiner Corp., Samuel J. Stoll, Jamaica, N. Y., of counsel.

HERLANDS, District Judge.

Plaintiffs, Peter Pan Fabrics, Inc. and Henry Glass & Co. (hereinafter "Peter Pan" and "Glass," respectively), have moved for a preliminary injunction in two separate actions against two different defendants: Civil Action 140-268, instituted against Martin Weiner Corp. (hereinafter "Weiner") and Civil Action 140-266, instituted against The Acadia Company, Inc. (hereinafter Acadia). Plaintiffs claim that two of plaintiffs' textile fabric design copyrights—identified as "Byzantium" and "Grecian Glory" —have been infringed, that is, Weiner has infringed Byzantium and Acadia has infringed Byzantium and Grecian Glory.

The relief afforded by Title 17 U.S.C.A. §§ 101(a) and 112, is sought by plaintiffs to preliminarily enjoin defendants from manufacturing, selling and delivering printed textiles that allegedly bear a copied reproduction of plaintiffs' copyrighted designs. Jurisdiction under title 28 U.S.C.A. § 1338, to grant injunctions against violation of a copyright, is vested in the district courts by Title 17 U.S.C.A. § 112.

Because both motions involve common questions of law and fact, they will be considered together.

Plaintiffs allege that original works of art entitled Style 680, Range 1, Byzantium (hereinafter "Byzantium"), and Style 680, Range 11, Grecian Glory (hereinafter "Grecian Glory"), were created by Pierre Kittler Studio in Paris, France; that the original designs were sold to Peter Pan; that these original works of art were reproduced as a design for textiles, and as such were submitted after satisfying all the requirements of the Copyright Laws (Act of July 30, 1947, c. 391, sec. 1; 61 Stat. 652; 17 U.S.C.A. §§ 1-32); and that a certificate of copyright was duly issued to Peter Pan for Byzantium (Certificate No. H 7290, dated July 9, 1958) and for Grecian Glory (Certificate No. H 7218, dated July 9, 1958).

Other infringement actions have been instituted against other defendants by the plaintiffs in this District to protect the copyrighted Byzantium design. In an action against Dixon Textile Corporation (Civil Action 140-109), District Judge Bryan, without opinion, granted plaintiffs' motion for a preliminary injunction. Subsequently, in an action against Brenda Fabrics, Inc. (Civil Action 140-267), District Judge Dimock also granted plaintiffs preliminary injunctive relief. Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc., D.C.S.D.N.Y. 1959, 169 F.Supp. 142.

Inasmuch as the defendants in the proceedings at bar have raised certain issues not presented by the defendants in the prior cases, it has become necessary to deal with these matters comprehensively.

Defendant Weiner argues: (1) that neither plaintiff has the requisite standing to bring a copyright infringement action; (2) that the defendant's accused design is not an infringing copy of the plaintiffs' copyrighted design; (3) that the dress made of plaintiffs' fabrics which defendant allegedly copied bore no copyright notice; (4) that the plaintiffs' copyright is invalid because the plaintiffs' design was published with insufficient copyright notice; (5) that the wrong defendant has been sued; and (6) that the alleged infringement ceased promptly upon notice given by plaintiffs.

Defendant Acadia argues: (1) that the copyrights should not have been granted to plaintiffs because the designs were lacking in originality; (2) that, if arguendo the copyrights are valid, the plaintiffs' failure to provide proper notice of copyright on the ultimate products (i. e., dresses) that embody the plaintiffs' copyrighted fabric designs results in a loss of the copyrights; and (3) that the plaintiffs have failed to establish a proper basis for the issuance of a preliminary injunction.

It is settled in copyright infringement cases that a preliminary injunction should issue when the plaintiff makes a prima facie showing that his copyright is valid and that the defendant has infringed. American Code Co., Inc. v. Bensinger, 2 Cir., 1922, 282 F. 829, 831, 835; Gerlach-Barklow Co. v. Morris & Bendien, Inc., 2 Cir., 1927, 23 F.2d 159, 163; Houghton Mifflin Co. v. Stackpole Sons, Inc., 2 Cir., 1939, 104 F.2d 306, 307; Trifari, Krussman & Fishel, Inc. v. Charel Co., Inc., D.C.S.D.N.Y. 1955, 134 F.Supp. 551, 554; Inge v. Twentieth Century-Fox Film Corp., D.C. S.D.N.Y., 143 F.Supp. 294, 299. Although plaintiffs in fact have shown that, unless afforded preliminary relief, they will suffer substantial and irreparable injury, no detailed proof of such irreparable harm is required on this motion. Rushton v. Vitale, 2 Cir., 1955, 218 F.2d 434, 436.

For the reasons set forth in this opinion, the court has concluded that the plaintiffs prima facie have validly copyrighted the designs in issue; that both defendants have infringed the copyrights by copying; that all of the defendants' contentions are lacking in merit; and, consequently, plaintiffs' motions for a preliminary injunction should be and hereby are, granted as to both defendants.

Plaintiffs' factual presentation of the economic background and commercial practices involved in this litigation is not controverted. Peter Pan—the registered owner of all the textile design copyrights utilized by its parent corporation—is a wholly owned subsidiary of Glass. Glass is a "style leader" converter, that is, a converter who originates new lines of designs, rather than producing "staple" goods which can be carried over from year to year.

In order to satisfy the demand by better women's apparel manufacturers for highly styled and novel materials, plaintiffs maintain a design department and send their representatives throughout the style centers of the world for the purpose of producing new and fashionable textiles. This emphasis on creating original, highly-styled designs requires the plaintiffs to produce a full line of new designs in all colors, although only a few of such designs become popular in any one selling season. To recoup the costs that are an inherent part of this mode of operation, the plaintiffs must necessarily charge a price that is substantially higher than that of a converter of finished printed textiles who "adopts" a successful design.

Plaintiffs charge that both defendants are in fact underselling them, and that Acadia is offering goods which bear the infringing designs at forty-two and one-half cents per yard, fifteen cents less than plaintiffs' price for the very same material. In addition to the loss of sales and profits, plaintiffs claim that a style leader's originality of design is quickly ended when the copyist's substantially cheaper fabric bearing the copied design becomes available for less expensive garments. Not only loss of good will, but also quick obsolescence of accumulated inventory results when a successful and exclusive design becomes common.

Defendants do not address themselves to the commercial practices alluded to above, except for one significant remark in the affidavit (para. 6) of George Cushing, "stylist and sales manager" of Acadia's dress fabrics department. He states that design "pirating" is very common in the industry—"copying of designs is as much a part of our industry as is the creating of those designs."

The well-known history of the struggle between "copyists," "pirates," "free-booters," and the design "originators" in the textile and allied industries has been described extensively. Note, Protection for the Artistic Aspects of Articles of Utility, 72 Harv.L.R. 1520 (1959); Weikart, Design Piracy, 19 Indiana L.J. 235 (1944); Pogue, Borderland—Where Copyright and Design Patent Meet, 52 Mich.L.R. 33 (1953); Whitman, Preventing Design Piracy: A copyright Law for Industrial Designs, 41 A.B.A.J., 242 (1955); Note, Protection of Styles and Designs in the Garment Industry, 26 U. Cin.L.R. 86 (1957); Young, Freebooters in Fashions: The Need for a Copyright in Textile and Garment Designs, 9 AS CAP, Copyright Law Symposium 76 (1958). The Copyright Office itself has prepared an exhaustive compilation of material on the general problems raised by this litigation. Ringer, Bibliography on Design Protection, Copyright Office, Library of Congress (Wash.D.C.1955).

We come now to the questions (raised by Weiner) whether the plaintiffs have the requisite standing to bring the action against Weiner and whether Weiner is properly named as a defendant.

The uncontradicted facts are that Glass wholly owns its subsidiary, Peter Pan; that Glass is a style-leader converter of textiles, developing novel designs for the better women's apparel market; that the manufacturing and selling of these printed textiles are accomplished by Glass, the parent corporation; that the two designs (Byzantium and Grecian Glory) were created by Pierre Kittler Studio, Paris, France, and were sold to Peter Pan, who registered them with the Register of Copyrights and who now holds the copyrights; and that Peter Pan is utilized by Glass to protect the names under which the goods are advertised and sold.

In light of the foregoing facts, Weiner argues that Glass has "no right, title or interest in the copyright in suit and consequently has no right to sue for the relief sought" and "in view of the all-inclusive activities of Henry Glass & Co. with regard to the subject fabric, no room appears to be left to Peter Pan Fabrics, Inc." This...