Royalty Designs, Inc. v. Thrifticheck Service Corp.

• Decision Date: 15 February 1962
• Parties: ROYALTY DESIGNS, INC., Plaintiff, v. THRIFTICHECK SERVICE CORP., Defendant.
• Court: U.S. District Court — Southern District of New York

204 F. Supp. 702

ROYALTY DESIGNS, INC., Plaintiff, v. THRIFTICHECK SERVICE CORP., Defendant.

United States District Court S. D. New York.

February 15, 1962.

Samuel J. Stoll, Jamaica, N. Y., for plaintiff.

Maxwell E. Sparrow, New York City, for defendant; Mark H. Sparrow, New York City, of counsel.

FREDERICK van PELT BRYAN, District Judge.

Plaintiff Royalty Designs, Inc. (Royalty) is the owner of two copyright registrations (numbers Gp16890 and Gp16892) issued May 7, 1958 for plastic molded toy coin banks in the shape of dogs. One registration is for a bank in the shape of a Boxer and the other for a bank in the shape of a Cocker Spaniel. Plaintiff has manufactured and sold its copyrighted banks since November, 1957. Copyright notice is stamped on a metal plug which fits securely into an opening on the bottom of the banks.

Royalty sues for infringement of its registrations alleging that some time in May, 1961 defendant Thrifticheck Service Corp. (Thrifticheck) began to manufacture and sell plastic molded toy banks in the shape of Boxer and Cocker Spaniel dogs which were direct copies of its copyrighted banks. It claims that the only difference between its products and those of Thrifticheck is that its banks are flocked with a substance which gives the appearance of dog hair and defendant's are not.

Royalty now moves for a preliminary injunction restraining Thrifticheck during the pendency of the action from further infringing its copyrights and from distributing and selling the toy dog banks complained of, alleging that unless preliminary injunctive relief is granted it will suffer irreparable injury.

It submitted samples of its finished banks and samples of its banks before they are flocked as well as samples of defendant's finished banks. Comparison of the samples shows conclusively that the Thrifticheck banks are direct copies of the Royalty copyrighted banks. The size, proportions, features and expressions of the animals represented are almost identical, with only minor and insignificant variations. The noses of the Royalty dogs are smooth and are molded as part of the entire bank. In the original molding of the Thrifticheck banks the dog's muzzle is flattened and a separate, somewhat more defined nose piece is glued on. The eyes of the Royalty dogs are predominantly black with some white showing whereas the Thrifticheck eyes are all black.

Apart from these insignificant differences the only other difference is in the finish used by defendant. Plaintiff's dogs are flocked with a tan colored substance which resembles dog hair. Defendant's dogs are bare plastic but are painted or tinted a tannish color.

These differences are totally irrelevant to the purpose for which the design is intended. Every important detail of the Royalty designs appear in the Thrifticheck dogs. The breed, size, shape and expressions of the dogs and each part of their bodies are almost precisely the same. The paws, ears, tails and mouths are carbon copies. The wrinkles about the foreheads and mouths are identical. In every important respect defendant's banks are a direct verisimilitude of plaintiff's designs. The variations in the finish, nose and eyes and any slight differences in size are all totally insignificant. This is not an instance or mere accidental similarity. It necessarily must result from conscious and intentional copying.

This is borne out by Royalty's uncontroverted statement that Thrifticheck acquired its master molds from the same moldmaker who manufactured plaintiff's molds from its original designs.

Thrifticheck does not deny that it has copied. It defends on the grounds that (1) the copyrights are invalid because the notice of copyright has not been properly affixed to the produce, and (2) that Royalty has failed to establish its claim of irreparable injury and, therefore, is not entitled to a preliminary injunction.

If Royalty has valid copyrights which have not been lost by failure to affix proper notice as required by 17 U.S.C. §§ 10 and 19, then it is entitled to a preliminary injunction on a finding that defendant has infringed without a detailed showing of irreparable injury. See, e. g., Joshua Meier Co. v. Albany Novelty Manufacturing Co., 236 F.2d 144 (2 Cir. 1956); Rushton v. Vitale, 218 F.2d 434 (2 Cir. 1955); Cortley Fabrics Co. v. Slifka, 175 F.Supp. 66 (S.D.N.Y. 1959); Scarves by Vera v. United Merchants & Manufacturers, 173 F.Supp. 625 (S.D.N.Y.1959).

There is no doubt that copyright protection extends to Royalty's designs as productions of originality and novelty. See Rushton v. Vitale, supra. Royalty does not claim rights to all toy banks in the form of Boxer and Cocker Spaniel...