Prestige Floral v. California Artificial Flower Co.

• Decision Date: 05 January 1962
• Citation: 201 F. Supp. 287
• Parties: PRESTIGE FLORAL, SOCIETE ANONYME, A. E. DeCamp and A. J. Fristot, Plaintiffs, v. CALIFORNIA ARTIFICIAL FLOWER COMPANY, (Inc.) and Calart (Inc.), Defendants.
• Court: U.S. District Court — Southern District of New York

201 F. Supp. 287

PRESTIGE FLORAL, SOCIETE ANONYME, A. E. DeCamp and A. J. Fristot, Plaintiffs, v. CALIFORNIA ARTIFICIAL FLOWER COMPANY, (Inc.) and Calart (Inc.), Defendants.

United States District Court S. D. New York.

January 5, 1962.

Kane, Dalsimer & Kane, New York City, for plaintiffs, Philip Dalsimer, and John Kurucz, New York City, of counsel.

Barlow & Barlow, Providence, R. I., Herbert B. Barlow, Jr., Providence, R. I., of counsel, and Keith, Bolger, Isner & Byrne, New York City, for defendants, Thomas J. Byrne, Jr., New York City, of counsel.

FEINBERG, District Judge.

This is a motion for a preliminary injunction. Plaintiff Prestige Floral, Societe Anonyme, ("Prestige") filed its complaint on June 22, 1961, alleging copyright infringement under 17 U.S.C. § 101 and seeking a permanent injunction, damages, and other relief. Jurisdiction is vested in this Court by 17 U.S.C. § 112 and 28 U.S.C. § 1338. The article allegedly infringed is a molded polyethylene flower in the form of a Charles lilac.¹

Defendant California Artificial Flower Company (Inc.) ("California") is a Rhode Island corporation and defendant Calart (Inc.) is a New York corporation. Both defendants have an office and a place of business at 225 Fifth Avenue, New York City. Defendants filed their answer on July 10, 1961. Beginning early in August 1961, settlement discussions were held intermittently. These proved abortive and on October 30, 1961, plaintiff noticed its motion for a preliminary injunction returnable on November 14, 1961. Thereafter, affidavits were submitted to the Court by plaintiff Prestige and by defendants. In addition, a hearing was held on December 11, 1961,² at which various exhibits were introduced and three witnesses testified: Donald A. Paulsen, an officer of D. Arnold Associates, exclusive distributor in this country for Prestige's artificial flowers; Edward R. Hughes, an expert on thermoplastic materials and molding; and Michele D'Agnillo, the principal of defendant corporations. From the affidavits, the exhibits, and the testimony of witnesses, and giving effect to my judgment as to the credibility of the witnesses where appropriate, I find the facts as hereinafter set forth.

Prestige is a French corporation engaged in designing, creating and manufacturing molded polyethylene flowers. Prestige has pioneered in the artificial flower field and enjoys a reputation for products of high quality and as a leader in the creation of new styles. Prestige created as an original work of art a sculptured lilac, made out of polyethylene, and first published this work on or about September 19, 1959. On or about September 22, 1960, a replica of the lilac was deposited by Prestige with the Copyright Office together with its application for copyright registration of the article as a sculpture, Class G. Thereafter, copyright registration No. Gp 25925 was issued.

Prestige's copyright lilac has at all times since publication had the copyright notice "© PRESTIGE FLORAL" molded on the long stem of the lilac near its base and on the underside of one of its leaves. A new version of the lilac was introduced into this country in the spring of 1961. This flower had similar copyright notices on the stem and leaf. The later version of the lilac differed from the original only by the inclusion of additional foliage on the main stem and is sufficiently similar to the earlier model to be covered by copyright registration No. Gp 25925.

Defendant California is well known in the artificial flower market offering a line of over seven hundred flowers and fruits. Some of its items are made in Rhode Island and others are imported. Defendants have offered for sale and sold artificial lilacs which Prestige claims infringe its copyright. The allegedly infringing lilacs were imported by defendant from a company in Hong Kong which admits making a copy of another artificial flower of French origin. Prior to ordering the lilacs from Hong Kong, defendants had knowledge of Prestige's lilac and, in fact, had tried to order a small supply of them early in January 1961 from Prestige's distributor in New York. Copying of artificial flowers in Hong Kong is well known in the trade.

Artificial lilacs are a seasonable item in greatest demand during the early spring. The season for lilacs begins in January and lasts through Easter. In November and December most wholesalers will decide which items they will carry during the spring season. Prestige's exclusive distributor in this country has conditioned its acceptance of Prestige's lilacs on Prestige's success in stopping the importation of "pirated duplicates * * * from Hong Kong." If this is not stopped, the distributor reserves the right to cancel its order. The lilac sold by defendants is offered at a price substantially lower than that of the Prestige lilac.

I

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. H. M. Kolbe Co. v. Armgus Textile Co., 279 F.2d 555 (2 Cir. 1960); Houghton Mifflin Co. v. Stackpole Sons, Inc., 104 F.2d 306, 307 (2 Cir.) cert. denied 308 U.S. 597, 60 S.Ct. 131, 84 L.Ed. 499 (1939); Trifari, Krussman & Fishel, Inc. v. Charel Co., 134 F.Supp. 551, 554 (S.D.N.Y.1955).

Initially, defendants have raised several questions as to the validity of plaintiff's copyright. First, they attack the copyright generally, claiming that there is not sufficient artistry in the creation of artificial flowers to justify copyright protection. Second, they raise various narrower objections to the copyright, including claims that the copyright notice on plaintiff's flowers was defective and that plaintiff has not produced a specimen of the alleged copyrighted lilac.

In connection with the broad attack on the copyright, 17 U.S.C. § 4 provides:

"The works for which copyright may be secured under this title shall include all the writings of an author."

17 U.S.C. § 5 provides that the application for registration shall specify to which of various enumerated classes the work in which copyright is claimed belongs. Plaintiff's application specified Class G, covering works of art, as the applicable class.³ The basic question, therefore, is whether plaintiff's artificial flower is copyrightable as a work of art.

A recent comprehensive report of the Register of Copyrights⁴ summarized pertinent court decisions on copyrightability as follows:

"It is well estabished, by a long line of court decisions, that in order to be copyrightable under the statute a work must meet the following requirements:

"(a) The work must be in the form of a `writing,' i. e., it must be fixed in some tangible form from which the work can be reproduced.

"(b) The work must be a product of original creative authorship. Two interrelated elements are involved here: originality and creativity.

"(1) The work must be original in the sense that the author produced it by his own intellectual effort, as distinguished from merely copying a preexisting work. It need not be novel (as a patentable invention must be); in theory at least, it could be precisely the same as a preexisting work as long as it was created by the author independently.

"(2) The work must represent an appreciable amount of creative authorship."⁵

The parties have not cited any cases involving artificial flowers. However, there are closely analogous situations which indicate that plaintiff's artificial flower may properly be the subject of a copyright. In Peter Pan Fabrics, Inc. v. Candy Frocks, Inc., 187 F.Supp. 334 (S.D.N.Y.1960), this Court granted a preliminary injunction in an infringement action where the copyrighted work of art was a floral design for a dress fabric. The Court pointed out (at 187 F.Supp. 336) that "Obviously, floral patterns are in the public domain, but plaintiff has contributed enough originality in the designs to qualify them as distinguishable variations."⁶ Similarly, in F. W. Woolworth Co. v. Contemporary Arts, Inc., 193 F.2d 162 (1 Cir.1951), aff'd 344 U.S. 228, 73 S.Ct. 222, 97 L.Ed. 276 (1952), copyright protection was afforded to statutes of a "Cocker Spaniel in Show Position" sold commercially. In its opinion, the Court of Appeals for the First Circuit said (193 F.2d at 164):

"It is the well established rule that a copyright on a work of art does not protect a subject, but only the treatment of a subject. * * * The proposition was elaborated by Mr. Justice Holmes in Bleistein v. Donaldson Lithographing Co. * * * wherein with respect to cromolithographs of a circus scene prepared for advertising purposes he said: `But even if they had been drawn from the life, that fact would not deprive them of protection. The opposite proposition would mean that a portrait by Velasquez or Whistler was common property because others might try their hand on the same face. Others are free to copy the original. They are not free to copy the copy. * * * The copy is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man's alone. That something he may copyright * * *.' Here the `something irreducible' * * * was shape. * * * It means the proportion, form, contour, configuration, and conformation, perhaps the latter in details too subtle for appreciation by anyone but a fancier, of the dog represented by the sculptured work of art."

In Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), the question raised was whether statuettes used as bases for electric lamps were protected by the copyright of the original models. The statuettes were of Balinese dancers. The Supreme Court held that use in industry would not bar or invalidate the copyrights.

One of the studies upon which the Report of the Register of Copyrights, supra, was based...