Segrets, Inc. v. Gillman Knitwear Co., Inc.
| Decision Date | 12 August 1998 |
| Docket Number | No. Civ.A. 94-12015-MBB.,Civ.A. 94-12015-MBB. |
| Citation | 42 F.Supp.2d 58 |
| Parties | SEGRETS, INC., Plaintiff, v. GILLMAN KNITWEAR COMPANY, INC., Defendant. |
| Court | U.S. District Court — District of Massachusetts |
Eric Jaeger, Ropes & Gray, Boston, MA, Kurt S. Kusiak, Todd & Weld, Boston, MA, for Segrets, Incorporated, plaintiff.
Daniel E. Rosenfeld, Warner & Stackpole, Boston, MA, Donald J. Mooney, Jr, Benesch, Friedlander, Coplan & Aronoff, Cincinnati, OH, for Gillman Knitwear Co., Inc., defendant.
Plaintiff Segrets, Inc. ("Segrets") filed this action against Gillman Knitwear Company, Inc. ("Gillman") on October 6, 1994. Count I of the three count original complaint alleges a violation of the Copyright Act, 17 U.S.C. §§ 101 et seq. ("the Copyright Act"), and counts II and III allege violations of The Lanham Act, 15 U.S.C. § 1125(a). The controversy depicted in the original complaint stems from Gillman's production and distribution of a sweater vest under the name of Christie (the "Christie I sweater"). Thereafter, Segrets amended its complaint to allege additional counts for copyright infringement and violation of the Lanham Act due to Gillman's production and distribution of a cardigan sweater under the name of Charro (the "Charro sweater").
Segrets, a company which designs, manufactures and markets women's clothing, holds a number of copyrights on its designs. One such copyright is for the fabric design entitled the Blanket Stitch Vest Style # 736033 (the "Blanket Stitch design") which generated a sweater vest under the same name (the "Blanket Stitch sweater"). Segrets submits that Gillman's Christie I sweater and a subsequent modification, denoted the Christie II sweater, infringe its copyrighted Blanket Stitch design.
Segrets also holds a copyright for a fabric design entitled the Primitive Patterns Cardigan # 126134 (the "Primitive Patterns design") which generated a cardigan sweater under the same name (the "Primitive Patterns sweater"). Segrets contends that Gillman's production and distribution of the Charro sweater infringes its copyrighted Primitive Patterns design.
In response to a September 6, 1996 Order issued by the district judge, Segrets characterized the Lanham Act claims as duplicative of the copyright infringement claims. Segrets further stated that if the court allowed its summary judgment motion and its request for statutory damages and attorneys' fees, then Segrets would waive the Lanham Act claims in the amended complaint, counts III through VI. After the district judge partially allowed the summary judgment motion, the parties proceeded to trial on the copyright infringement claims, i.e., counts I and II of the amended complaint. Segrets also did not object to Gillman's proposed finding that there was no evidence of customer confusion as to the source of the Christie II and Charro sweaters. In light of this court's resolution of the copyright claims, Segrets is ordered to advise this court on or before August 21, 1998, as to the status of counts III through VI of the amended complaint.
On September 26, 1996, the district judge issued an oral ruling on Segrets' motion for summary judgment and, thereafter, a written decision. With respect to Count I for copyright infringement of the Blanket Stitch design and Count II for copyright infringement of the Primitive Patterns design, the district judge allowed summary judgment on the issue of the validity of the copyrights. Under Count I, the district judge also allowed the summary judgment motion on the issue of: (1) Gillman's actual copying of the Blanket Stitch design in its Christie I and Christie II sweaters; and (2) the substantial similarity of Gillman's Christie I sweater and the Blanket Stitch design. Under Count II, the district judge allowed the summary judgment motion on the issue of Gillman's actual copying of the Primitive Patterns design in the Charro sweater but denied the motion as to the substantial similarity of the Charro sweater and the Primitive Patterns design.
Issues remaining for trial on the copyright infringement counts primarily include: (1) the substantial similarity of the Christie II sweater and the Blanket Stitch design; (2) the substantial similarity of the Charro sweater and the Primitive Patterns design; (3) the wilfulness of Gillman's infringement, if any, of the Blanket Stitch design and the Primitive Patterns design; (4) the amount of statutory damages, if any;1 and (5) the amount of attorneys' fees and costs, if any. During a three day bench trial, this court heard testimony from the following witnesses: Dorian Lee Lightbown ("Lightbown"), Senior Design Director of Knitwear at Segrets; Theresa Chang ("Chang"), Production Manager for Gillman; William Gillman, President of Gillman; Sigred Olsen ("Olsen"), Creative Director at Segrets as well as the founder of the company; Julie Smith ("Smith"), primary designer for Gillman's women's line of clothing in the 1990s until her departure from Gillman in the fall of 1996; Steven J. Kandrac ("Kandrac"), Senior Vice President and Chief Financial Officer at Segrets; and Professor Margaret Voelker-Ferrier ("Gillman's expert"), Associate Professor of Design at the University of Cincinnati.
Segrets, a Massachusetts corporation, designs women's clothing and owns the copyrights to the Blanket Stitch design and the Primitive Patterns design. Lightbown, together with Olsen, created both the Blanket Stitch and the Primitive Patterns designs.
In 1992 Lightbown began the process of designing the Blanket Stitch sweater. Using her interpretation of a southwestern theme, she sketched the sweater line for line.2 She does not, however, consider color as part of her designs.3
Contrary to Lightbown's belief, however, this court finds that color comprised part of the Blanket Stitch design as well as part of the Primitive Patterns design. In general, color forms part of the design process to create a piece of women's clothing. It is important to female consumers in deciding whether to purchase an item of clothing. Color changes the appearance of a garment, sometimes dramatically. As noted by Smith, a person will not even look at a pattern if the color is poor or incorrect.
In creating a design, Olsen, who typically chooses the colors employed in Segrets' sweaters, testified that the design is drawn on a piece of paper "and then its colored." Olsen chose the colors for the Blanket Stitch and the Primitive Patterns designs. She also stated that, "My part of the design is selecting colors."
In addition to the foregoing, color is an integral part of the Blanket Stitch design because it serves to distinguish and define the rows and patterns therein. Likewise, color serves to distinguish the rows and to create the marled look of the Primitive Patterns design. Moreover, the Blanket Stitch sweater was part of a color coordinated line of clothing.4 Similarly, the Primitive Patterns design formed part of a color coordinate line of clothing thereby indicating the importance of color in the garment's design. Finally, as required, see 37 C.F.R. § 202.21(a) (1997), Segrets attached a color photograph of the Blanket Stitch sweater and the Primitive Patterns sweater to identify the copyrighted works as part of its copyright applications.
For the fall 1993 season, Olsen chose the colors for the Blanket Stitch sweater. The primary color is a deep blue with different shades of blue, brown, tan and white along the horizontal lines of the design. Segrets began selling the Blanket Stitch sweater in the summer or fall of 1993 at a wholesale list price of $39.5 After the fall of 1993 Segrets sold an embellishment of the Blanket Stitch sweater, done primarily in purple and peach colors, exclusively to Orvis, a well known chain of retail stores.
In creating the Christie I sweater, Smith initially purchased the Blanket Stitch sweater and brought the sweater back to her office. She also sent the sweater to Gillman's overseas manufacturer in order for the manufacturer to create a sample.6 Except for the colors, the Christie I sweater was a copy of the pattern of the Blanket Stitch sweater. In fact, Smith essentially instructed the manufacturer to make a copy the Blanket Stitch sweater except for the color. According to Smith, at some point in the approval process, William Gillman approved these instructions. Gillman's overseas manufacturer produced 36 samples of the Christie I sweater which, except for the colors, were identical to the Blanket Stitch sweater.7
William Gillman first learned of Segrets' copyright infringement claim vis-a-vis the Christie I sweater in April 1994.8 In particular, by letter dated April 18, 1994, Kandrac notified William Gillman of Gillman's unauthorized use of the Blanket Stitch design in the Christie I sweaters. Having received the copyright infringement notification letter from Segrets, Gillman decided to forego its plans to sell the Christie I sweater.9 Instead, it modified the design of the Christie I sweater while retaining the overall look and feel of the Christie I sweater. In fact, Gillman made the modifications with the idea or goal of retaining the overall look and feel of the Christie I sweater which, as noted above, was a copy of the pattern of the Blanket Stitch sweater except for the colors.
In order to modify the Christie I sweater, William Gillman simply instructed Chang to change the sweater so that it was not the same. He did not elaborate upon this cryptic instruction nor provide Chang with any specific guidance. Chang, who is not a designer,10 made all of the changes to the Christie I sweater in the course of one evening at home after work. She spent a total of two to three hours changing the Christie I sweater into the Christie II sweater. In making the modifications, Chang wanted to keep the same overall look and feel...
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...to the court for comparison purposes. Data East USA Inc. v. Epyx, Inc., 862 F.2d 204, 207 (9th Cir.1988); Segrets, Inc. v. Gillman Knitwear Co., 42 F.Supp.2d 58, 80 (D.Mass. 1998). Although Berkla has reproduced various exemplars for illustrative purposes, Berkla has submitted no comprehens......