Sunset Lamp Corp. v. Alsy Corp.

• Decision Date: 02 November 1988
• Docket Number: No. 88 Civ. 3443 (MBM).,88 Civ. 3443 (MBM).
• Citation: 698 F. Supp. 1146
• Parties: SUNSET LAMP CORP., Plaintiff, v. ALSY CORP., Alsy Manufacturing Inc., Cycle II Corp., and S & M Industries Corp., Defendants.
• Court: U.S. District Court — Southern District of New York

698 F. Supp. 1146

SUNSET LAMP CORP., Plaintiff, v. ALSY CORP., Alsy Manufacturing Inc., Cycle II Corp., and S & M Industries Corp., Defendants.

No. 88 Civ. 3443 (MBM).

United States District Court, S.D. New York.

November 2, 1988.

COPYRIGHT MATERIAL OMITTED

Arthur H. Seidel, Nancy A. Rubner, Mark E. Bailey, Seidel, Gonda, Lavorgna & Monaco, P.C., Philadelphia, Pa., for plaintiff.

Robert L. Sherman, Ruskin, Schlissel, Moscou, Evans & Faltischek, Mineola, N.Y., for defendants.

OPINION AND ORDER

MUKASEY, District Judge.

Plaintiff Sunset Lamp Corp. and defendants Alsy Corp., et al.¹ compete in the manufacture and distribution of table and floor lamps. Plaintiff sues for alleged infringement of the copyright on its banana leaf design for table and floor lamps.² Plaintiff secured copyrights in May 1987 for table and floor lamps ornamented with a banana leaf design created by an artisan in plaintiff's employ. In this action plaintiff Sunset claims that beginning in or about May 1988, Alsy manufactured and distributed lamps that infringed both the table and floor models of plaintiff's banana leaf lamp, and that bore a false copyright notice in Alsy's name. Sunset charges that such manufacture and distribution infringed its copyrights in violation of 17 U.S.C. § 501, and constituted unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and New York State law. Plaintiff seeks an injunction, damages and attorneys' fees. By agreement of the parties, the record of the two hearings conducted on May 31 and July 14, 1988 will be treated as both the preliminary injunction hearing and the trial on the merits pursuant to Rule 65(a)(2), Fed.R.Civ.P.

At issue in this case is whether Sunset's design for the lamps can be protected by the copyright laws and whether Sunset's notice of copyright was omitted from more than a relatively small number of copies of its lamps such that any copyright would become invalid. I have found that plaintiff's banana leaf design is copyrightable. However, because the evidence at trial showed that plaintiff omitted the required copyright notice from more than a relatively small number of its table lamps and then failed to take reasonable steps to add notice to all copies distributed to the public after the omission was discovered, plaintiff's copyright on its table lamps is invalid. Accordingly, plaintiff is entitled to an injunction and damages only with respect to defendant's infringement of the copyright on its floor lamps.

In addition, plaintiff claims that defendant's placement of a copyright notice on both its table and floor lamps constitute unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and New York State law. This claim is sustained. Defendant's distribution of lamps bearing a false copyright notice is also enjoined, as set forth below.

I.

Beginning in 1986, plaintiff Sunset began to upgrade its line of lamps to include more original designs. One of these was a banana leaf design created by Asta Ingle, a Sunset employee, who drew it based on her particular rendering of a banana leaf plant she saw from the window of her sister's house. The leaves in her design are somewhat elongated versions of natural banana leaves, and intertwine in a fashion not found in nature. She adapted her drawings for both a table and a floor lamp, which were marketed beginning in April 1987 and for which copyrights were registered on May 7, 1987. Copyright notices were contained on gummed labels affixed to the base of each lamp. In addition, Sunset hung a tag, attached by a string to the harp of the lamp, that carried a copyright notice on the back.

It is undisputed that Alsy had access at the latest by January 1988 to both the table and floor models of Sunset's lamps when an Alsy employee saw and bought such lamps at a California department store. However, Alsy avers that neither model bore a copyright notice. Alsy contends that it then created its own banana leaf motif for a table and a floor lamp, and proceeded to market them with copyright notices in the name of defendant S & M Industries stamped into the base of each lamp. Defendant's table lamp bears a copyright date of 1988; its floor lamp bears a copyright date of 1987. The person alleged to have been the creator of Alsy's banana leaf table and floor lamps died just before the first hearing in the case. No drawing or other evidence was presented to substantiate a claim of independent creation.

Defendant Alsy took the position at trial both that Sunset's banana leaf design was not copyrightable, a position somewhat at odds with its own placement of a copyright notice on the Alsy version of the banana leaf lamp, and that Sunset had in fact distributed significant numbers of banana leaf lamps without copyright notices affixed in a manner sufficient to give notice under the copyright laws. Such a failure would, in effect, place the design of the lamp, even assuming it to have been copyrightable, in the public domain. In a dramatic illustration of this argument, Alsy introduced into evidence at the conclusion of the May 31 hearing a table lamp purchased at the Fortunoff's department store in Westbury, New York, still in its original heat-sealed transparent plastic wrapping. The gummed copyright label that plaintiff claimed to affix to the base of every lamp that left its factory was nowhere to be seen.

At the continued hearing on July 14, plaintiff Sunset introduced evidence reflecting its practice of sticking gummed labels on the base of every banana leaf lamp assembled on its production line, and inspecting each lamp to assure that the label has been affixed. At the same time, the testimony showed that plaintiff's table lamps pass through heat when they are "shrink wrapped" in plastic; plaintiff's floor lamps are not so wrapped. This heat processing of the table lamps follows placement of the gummed labels, and apparently can dislodge a gummed label affixed at an earlier stage of production to the bottom of a lamp. Also, the heat processing follows the inspection of the table lamps. Thus, even if a gummed label is placed on every table lamp, some can come off without detection. Although plaintiff has acknowledged that some of its table lamps, but not its floor lamps, have entered the stream of commerce without the gummed copyright labels, the only apparent difference in processing that would explain this phenomenon is that table lamps are subjected to heat treatment. However, plaintiff has done nothing to change its quality control procedures to inspect table lamps after heat processing.

Plaintiff has claimed that the gummed label "has been omitted from no more than a small number of copies" of its table lamp, and from no copies of its floor lamp, such that copyright protection has not been lost. 17 U.S.C. § 405(a)(1). Indeed, plaintiff insists the record shows that only two of more than 125 inspected table lamps failed to carry the gummed label. This calculation can be made only by (i) rejecting outright the affidavits of defendant's executives asserting that they purchased at least one of plaintiff's table lamps and inspected several others at the Bullock's department store in Los Angeles bearing no copyright sticker; (ii) disregarding the deposition evidence secured by plaintiff reflecting that, of the 30 table lamps in stock at the Fortunoff's department store in Westbury, New York at the time this case was tried, three did not carry the sticker; and (iii) overlooking the affidavit of plaintiff's employee, Helga Dzik, who allegedly inspected 31 table lamps at plaintiff's warehouse in Commerce, California and found one without a sticker, confirming that some table lamps must have left the factory without stickers. The evidence did show that, at the time of the deposition and afterward, plaintiff took steps to place the sticker on the table lamps at Fortunoff's from which it had been omitted, and to distribute stickers to other stores whose stock might include lamps from which stickers had been omitted. However, given that the sample of lamps at Fortunoff's suggests plaintiff had been distributing 10% of its table lamps without proper copyright notice, that would mean that plaintiff distributed about 314 of 3,144 table lamps without proper copyright notice by the beginning of May 1988, shortly before this action was begun.

Although one of defendant's executives claimed to have bought one of plaintiff's floor lamps and seen others without a copyright notice, I feel constrained to reject such evidence in view of more convincing evidence, as follows: thoroughly credible witnesses testified that copyright stickers were placed on all banana leaf lamps at plaintiff's factory; the manufacturing and wrapping process for floor lamps includes no stage at which they are heated or otherwise treated in a fashion to dislodge the gummed labels; no floor lamp without a copyright notice has been discovered since this litigation was commenced; and no evidence from neutral third parties such as store personnel was presented to substantiate defendant's claim that floor lamps without copyright notices entered the stream of commerce earlier.

II.

"Reduced to most fundamental terms, there are only two elements necessary to the plaintiff's case in an infringement action: ownership of the copyright by the plaintiff, and copying by the defendant." 3 M. Nimmer, Nimmer on Copyright, § 13.01 (1988). Copying can be proved by access and substantial similarity, Id., at § 13.01B, and defendant has conceded access in this case. Accordingly, although I understand defendant to deny similarity and thus treat that issue below, its primary defenses are addressed to plaintiff's ownership of a valid copyright: first, that the banana leaf design at issue cannot be copyrighted because it is part of a useful work; second, that the design cannot be copyrighted because it merely copies a form from nature and...