Condotti, Inc. v. Slifka, 223 F. Supp. 412 (S.D.N.Y. 1963)
October 21, 1963
v.
Joseph SLIFKA and Sylvia Slifka, doing business as Slifka Fabrics and Nuloom Fabrics and Joseph Samelson, Defendants.
United States District Court S. D. New York.
Helfat & Helfat, New York City, Bernard A. Helfat, New York City, of counsel, for plaintiff.
Arnold R. Krakower, New York City, Isidore A. Seltzer, New York City, of counsel, for defendants.
HERLANDS, District Judge.
This is an application for a temporary injunction by the owner of four copyrighted textile designs (Exhibits "1", "3", "5" and "7"). The defendants sought to be so enjoined are competitors of the plaintiff who are marketing similar textile designs (Exhibits "2", "4", "6" and "8") claimed by plaintiff to be infringing plaintiff's copyrighted designs. In addition, plaintiff claims that defendants have been committing acts of unfair competition.
*413 Certain uncopyrighted fabric designs (Exhibits "9" and "11") owned by plaintiff are also said to have been copied by defendants (as exemplified by Exhibits "10" and "12"); and this alleged copying of plaintiff's uncopyrighted designs is also encompassed within plaintiff's charge of unfair competition.
Plaintiff recognizes that the defendants' designs are not replicas or exact copies of its designs. However, plaintiff contends that in certain material respects e. g., over-all appearance, aesthetic appeal, structural features, basic pattern, configuration, spatial groupings and arrangements, colors and color combinations the defendants' designs are copies of the plaintiff's copyrighted and uncopyrighted designs.
Plaintiff's moving papers, including the demonstrative evidence of the plaintiff's and defendants' designs as embodied in the cloth, are an elaboration of the foregoing contention.
This contention is further supported by the affidavits tending to establish that various representatives of the defendants have admitted to the trade that the defendants have copied the plaintiff's designs and that whatever changes were effected by the defendants were of such a nature as to accomplish copying while supplying the defendants with the defense that their designs were different.
Defendants controvert the plaintiff's moving affidavits by submitting detailed denials and explanations in their opposing affidavits and various exhibits.
Defendants have been litigants in prior similar fabric-design lawsuits in this court. Millworth Converting Corporation v. Slifka, 276 F.2d 443 (2d Cir. 1960); Clarion Textile Corp. v. Slifka, 223 F. Supp. 950, 61 Civ. 2258 (S.D.N.Y. 1961); Cortley Fabrics, Inc. v. Slifka, 175 F. Supp. 66 (S.D.N.Y.1959). They and their attorneys are veterans in this arena of copyright warfare. Their papers, their arguments and defendants' designs manifest this experience.
The opposing affidavit of the defendant Joseph Samelson (sworn to September 1, 1963) states inter alia:
"The apparent similarities between the defendants' designs and those of the plaintiff are attributable to the fact that the defendants' designs express design ideas like those expressed in the plaintiff's designs. The only other apparent similarity of the respective designs is that the defendants' designs have similar colors to those used in the plaintiff's designs" (page 3). (Emphasis added.)
"During the latter part of April or early part of May of this year, I had seen some of the plaintiff's goods and liked the ideas shown or suggested by their printed designs. I then participated with artists in the employ of Slifka Fabrics in the selection of design elements, useful as sources for the creation of our own original designs expressing similar ideas" (page 4). (Emphasis added.)
This defendant (Samelson affidavit, p. 4) claims that he "used as the artistic sources for the defendants' designs" a so-called "idea and reference book" by Michael Estrin, entitled "2,000 Designs, Forms and Ornaments" (Defendants' Exhibit "A"). It is further stated (Samelson affidavit, p. 4):
"All of the component design motifs and elements of defendants' respective fabric designs are based upon and derived from similar designs illustrated in that reference book, * * *."
In elaboration of the latter statement, Samelson makes the following specific assertions in his affidavit concerning his use of the reference book, Exhibit "A", in allegedly preparing the four accused designs:
As to Exhibit "2"
This design (charged by plaintiff with infringing Exhibit "1") is denominated by defendants as "Defendants' Oriental or a Chinese Dragon Design". Samelson says that the "dragon depicted in the defendants' *414 design was adapted from the animal shown" on page 124 of Exhibit "A"; that the dragon there depicted is "an imaginary or fictional animal with talon claws and shaggy fur"; and that the defendants' design is an adaptation of that animal rather than of the lion in the plaintiff's design.
As to Exhibit "4"
This design (charged by plaintiff with infringing Exhibit "3") is denominated by the defendants as "Defendants' Crown on Feathers Design". Samelson says that the "sources for this design, which consists essentially of an openwork crown resting on impressionistic foliage" are "the similar openwork crown shown" on page 44 of Exhibit "A"; and that the floral elements of the design were derived from "similar foliage depicted on one of the designs appearing on the cover" of Exhibit "A".
As to Exhibit "6"
This design (charged by plaintiff with infringing Exhibit "5") is denominated by defendants as "Defendants' filigree or lacy type ornaments on a striped background design". Samelson says that "the sources" of its motifs and ornaments are those depicted on pages 65 and 79 of Exhibit "A".
As to Exhibit "8"
This design (charged by plaintiff with infringing Exhibit "7") is denominated by defendants as "Defendants' coat of arms mounted on bowl design". Samelson says that the sources of its coat of arms featuring a lion and a unicorn and its bowl under the coat of arms are corresponding items on pages 44 and 106 of Exhibit "A".
Plaintiff has submitted a detailed analysis demonstrating the many similarities between the plaintiff's and the defendants' designs. Defendants have submitted a detailed analysis demonstrating the many disparities between the plaintiff's and defendants' designs. These analyses are set forth as an appendix to this opinion.
The total record establishes the following facts and conclusions:
1. There are many striking similarities between the plaintiff's and the defendants' designs.
2. There are many significant differences between the parties' designs.
3. Plaintiff's copyrighted designs (Exhibits "1", "3", "5" and "7") are original designs, not previously in the public domain. H. M. Kolbe Co., Inc. v. Armgus Textile Company, Inc., 315 F.2d 70, 72 (2d Cir. 1963); Peter Pan Fabrics, Inc. v. Dixon Textile Corp., 280 F.2d 800, 802 (2d Cir. 1960); Peter Pan Fabrics, Inc. v. Acadia Company, 173 F. Supp. 292 (S.D.N.Y.1959), aff'd Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960); Alfred Bell & Co. Ltd. v. Catalda Fine Arts Inc., 191 F.2d 99, 102-103 (2d Cir. 1951).
4. Because plaintiff's copyrighted designs have not been in the public domain, the test of infringement to be applied herein is that laid down in Peter Pan Fabrics, Inc. v. Acadia Company, supra, and not that formulated in Millworth Converting Corp. v. Slifka, 276 F.2d 443, 445 (2d Cir. 1960), where the basic design had been in the public domain.
5. In Peter Pan Fabrics, Inc. v. Martin Weiner Corp., supra, Judge Hand (274 F.2d at 489) expounded the test here applicable as follows:
"The test for infringement of a copyright is of necessity vague. In the case of verbal `works' it is well settled that although the `proprietor's' monopoly extends beyond an exact reproduction of the words, there can be no copyright in the `ideas' disclosed but only in their `expression.' Obviously, no principle can be stated as to when an imitator has gone beyond copying the `idea,' and has borrowed its `expression.' Decisions must therefore inevitably be ad hoc. In the case of designs, which are addressed to the aesthetic sensibilities of an observer, the test is, if possible, even more intangible. *415 No one disputes that the copyright extends beyond a photographic reproduction of the design, but one cannot say how far an imitator must depart from an undeviating reproduction to escape infringement. In deciding that question one should consider the uses for which the design is intended, especially the scrutiny that observers will give to it as used. In the case at bar we must try to estimate how far its overall appearance will determine its aesthetic appeal when the cloth is made into a garment. Both designs have the same general color, and the arches, scrolls, rows of symbols, etc. on one resemble those on the other though they are not identical. Moreover, the patterns in which these figures are distributed to make up the design as a whole are not identical. However, the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same. That is enough; and indeed, it is all that can be said, unless protection against infringement is to be denied because of variants irrelevant to the purpose for which the design is intended."
6. Defendants' designs are not sufficiently imitative to infringe, under the test laid down by Judge Hand. Obviously there are many striking similarities in structural characteristics, in uses of shadings, stippling, colors and color combinations, and in spatial arrangements and configurations. But equally obvious are the many striking dissimilarities and variations.
Considering the uses for which the designs are intended, the Court is of the opinion that the defendants' designs contain enough variants to give them a different over-all appearance and aesthetic appeal when the cloths are made into garments.
7. Defendants sedulously borrowed each of plaintiff's "ideas". Defendants then proceeded to make substantial deviations from plaintiff's "expression" of those ideas by cross-breeding plaintiff's expressions with those found in the design form-book (Exhibit "A"). As a result, defendants' designs are aesthetic mutations, reflecting major changes and significant alterations that keep clear of plaintiff's "expression".
8. In view of the preceding finding, the present case is governed by the principle that there is no copyright infringement when only the ideas are copied. See Mazer v. Stein, 347 U.S. 201, 217, 74 S. Ct. 460, 98 L. Ed. 630; Millworth Converting Corporation v. Slifka, 276 F.2d 443, 445, 446 (2d Cir. 1960); Clarion Textile Corp. v. Slifka et al., 223 F. Supp. 950, 61 Civ. 2258 (S.D.N.Y. 1961).
This is not a case where the copyists infringed the plaintiff's "expression" of its ideas, as in Peter Pan Fabrics, Inc. v. Acadia Company, supra; Peter Pan Fabrics, Inc. v. Candy Frocks, Inc., 187 F. Supp. 334, 336 (S.D.N.Y.1960).
9. Plaintiff has failed to establish its charge of unfair competition, in fact and in law. There is no evidence that a secondary meaning has attached to plaintiff's merchandise or designs; nor is there any evidence that defendants have palmed off their goods or designs as plaintiff's or that any customers have been deceived or confused as to the source or origin of any of the goods purchased by them. Miss Susan, Inc. v. Enterprise & Century Undergarment Co., 270 App.Div. 747, 62 N.Y.S.2d 250 (1946); Oleg Cassini, Inc. v. Dorene Fashions Corp., Sup., 155 N.Y.S.2d 64, rev'd on other grounds, 3 A.D.2d 706, 159 N.Y.S.2d 664 (1957), aff'd 4 N.Y.2d 826, 173 N.Y.S.2d 621, 149 N.E.2d 899 (1958); Varsity Sportswear Inc. v. Princess Fabrics Co., 174 Misc. 298, 19 N.Y.S.2d 723 (1940); Samuel Winston Inc. v. Charles James Services, Inc., S. 159 N.Y.S.2d 716 (1956).
Unfortunately for the plaintiff, this case is controlled by desiderata of optics and aesthetics and not ethics.
*416 The findings and conclusions required by F.R.Civ.P., rule 52(a), are contained in this opinion.
The plaintiff's motion is denied. Settle order on notice within five days, in accordance with F.R.Civ.P., rule 65(d).
APPENDIX
COMPARISON SUBMITTED BY PLAINTIFF
COPYRIGHT NO. K-66801
PATTERN 1546 (LION DESIGN)
COMPARISON OF EXHIBITS "1" AND "2"
EXHIBIT "1" EXHIBIT "2"
CENTRAL FIGURE Lion Rampant Lion Rampant or
similar animal
TAIL Long and recurved Long and recurved
knob at end knob at end
TONGUE Protruding Protruding
HINDLEGS Firmly planted, left Firmly planted, left
leg advanced leg advanced
FORE LEGS Raised and separated Raised and separated
BACK Recurved Recurved
MARKINGS Stippled effect, for Stippled effect, for
three - dimensional three - dimensional
effect, on chest, effect, on chest,
along back, tail along back, tail
and legs, most apparent and most apparent
on light on light colored
colored areas. areas. Contrasting
Contrasting color color on
on chest, along chest, along legs,
legs, top of head, top of head, eyes
eyes and tongue. and tongue. Outline
Outline and markings and markings
in darker in darker shade of
shade of body color. body color.
SIZE 4¾" × 3¼" 5" × 4½"
BACKGROUND Solid Color Solid Color
ALIGNMENT OF Figures in alternate Figures in alternate
FIGURES rows inverted. rows inverted.
Lions spaced precisely Lions spaced precisely
opposite vacant opposite vacant
space in adjacent space in adjacent
rows. rows.
VERTICAL INTERVAL
BETWEEN
FIGURES 2¾" 3"
*417
HORIZONTAL INTERVAL
BETWEEN FIGURES
IN ALTERNATE
ROWS 5 5/8 " 5 5/8 "
COLOR 3 colors plus background 3 colors plus background
color color
COPYRIGHT NO. K-66802
COMPARISON OF EXHIBITS "3" AND "4"
PATTERN 1572 (CROWN AND FOLIAGE DESIGN)
EXHIBIT "3" EXHIBIT "4"
CENTRAL FIGURE Foliage and Crown Foliage and Crown
RELATIVE POSITIONS Foliage appears to Foliage appears to
be growing out of be growing out of
base of crown. base of crown.
(This is a highly
original combination)
RELATIVE SIZE Foliage is higher Foliage is higher
and wider than and wider than
crown. crown.
SYMMETRY Foliage and crown Foliage and crown
are both symmetrical are both symmetrical
on vertical axis. on vertical axis.
MARKING Crowns and foliage Crowns and foliage
are divided on vertical are divided on vertical
axis by contrasting axis by contrasting
colors. Pearls colors. Pearls
crown. or beads on top of
crown.
Stippled effect on Stippled effect on
right side of figure right side of figure
when viewed with when viewed with
crown above foliage. crown above foliage.
BACKGROUND Solid color where Solid color where
black, two air-brush black, two air-brush
ombre stripes on ombre stripes on
dyed ground in other dyed ground in other
colors. colors.
ALIGNMENT OF Figures in alternate Figures in alternate
FIGURES rows inverted. rows inverted.
Crown and foliage Crown and foliage
spaced precisely opposite spaced precisely opposite
vacant spaces vacant spaces
in adjacent rows. in adjacent rows.
VERTICAL INTERVAL
BETWEEN FIGURES 2½" 2¾"
*418
HORIZONTAL INTERVAL
BETWEEN FIGURES
IN ALTERNATE
ROWS 4 5/8 " 5 1/8 "
COLOR On striped backgrounds On striped backgrounds
grounds 5 colors or 5 colors or
rollers plus background rollers plus background
ground color. Pigment color. Pigment
overprinting overprinting
used to print light used to print light
colors on darker colors. colors on darker colors.
On black backgrounds On backgrounds
3 colors plus 3 colors plus background
background color. color.
COPYRIGHT NO. K-66811
COMPARISON OF EXHIBITS "5" AND "6"
PATTERN 1544 (LOCK AND KEY DESIGN)
EXHIBIT "5" EXHIBIT "6"
CENTRAL FIGURE Highly decorated Highly decorated
keyhole plate with keyhole plate with
hole in center and hole in center and
key. key.
RELATIVE POSITIONS Key is vertical parallel Key is vertical parallel
and adjacent to and adjacent to
lock. lock.
RELATIVE SIZE Area of lock is about Area of lock is about
twice that of key. twice that of key.
MARKING Contrast is given to Contrast is given to
figures by background figures by background
stripes cutting stripes cutting
through them, through them,
and lock and key are and lock and key are
each divided vertically each divided vertically
by color. by color.
SIZE 4" × 3¼" 4" × 4"
BACKGROUND Repeated stripes of Repeated stripes of
three different colors. three different colors.
(Two colors on
dyed ground.) Stripes all approximately
Stripes all approximately two inches in
two inches in width.
width.
COVER ROLLER Whole design is covered Whole design is covered
by thin black by thin black
lined effect with random lined effect with random
thickening of thickening of
lines running in lines running in
same direction as same direction as
wide stripes. wide stripes.
*419
ALIGNMENT OF Figures in alternate Figures in alternate
FIGURES rows inverted. rows inverted.
Lock and key spaced Lock and key spaced
precisely opposite precisely opposite
vacant spaces in adjacent vacant spaces in adjacent
rows. Although rows. Although
design is inverted, design is inverted,
key always key always
remains on same remains on same
side of lock. (Not a side of lock.
true two-way pattern)
VERTICAL INTERVAL
BETWEEN FIGURES 3 5/8 " 3¾"
VERTICAL INTERVAL
BETWEEN SAME
POINT IN DESIGNS IN
SAME ROW 7¾" 7¾"
HORIZONTAL INTERVAL
BETWEEN FIGURES
IN ALTERNATE
ROWS 4" 3½"
HORIZONTAL INTERVAL
BETWEEN SAME
POINT IN DESIGN IN
ALTERNATE ROWS 7¼" 7½"
COLOR 5 colors on dyed 5 colors on dyed
ground. ground.
Lock and Key shading Lock and Key shading
contrasts with contrasts with
striped background. striped background.
Defendants' Exhibit "B" contains samples of Exhibit 6 printed on light backgrounds. All other samples of Exhibits 5 and 6 are printed on dark backgrounds as called for by the season in which they were offered for sale. Any change from a dark background to a light background is quite obvious. It is equally noticeable between two pieces of defendants' own textile on different backgrounds as it is between plaintiff's design on a dark background and defendants' on a light background. The fact that a copy will not be confused with the original if they are printed in contrasting colors does not, however, excuse infringement. In the case at bar, defendants actually offered the infringing design for sale in the same colors as those used by plaintiff, and there was confusion. The light grounds were obviously an afterthought and may never have been sold in commercial quantities. Infringement occurs when a design is copied from the copyright, regardless of the colors in which it is printed, even though, as a practical matter, the copyright owner may suffer pecuniary damage only when the copy is sold in similar colors to its own. There would have been no incentive for defendants to copy the copyright if they were not using plaintiff's color combinations.
*420
COPYRIGHT NO. K-67154
COMPARISON OF EXHIBITS "7" AND "8"
PATTERN Y-1605 (COAT OF ARMS DESIGN)
EXHIBIT "7" EXHIBIT "8"
CENTRAL FIGURE Conventional Coat of Conventional Coat of
Arms. Arms.
ANIMALS Two animals flank Two animals flank
figure and third sits figure and third sits
on crest. on crest.
CROWN Centered at top of Centered at top of
figure. figure.
SHIELD Quartered, at center Quartered, at center
of figure. of figure.
MARKINGS Darker, stippled, Darker, stippled,
shading on crest shading on crest
right side of crown, right side of crown,
right animal, left right animal, left
half of shield and half of shield and
right side of base. right side of base.
All animals have All animals have
shaded outline. shaded outline.
SIZE 4 3/8 " × 5¼" 4½" × 5 7/8 "
BACKGROUND Solid color Lighter Solid color Lighter
shade of same color shade of same color
as figure. as figure.
ALIGNMENT OF All figures face same All figures face same
FIGURES way (one way pattern) way.
Alternate rows
Alternate rows spaced, so that figures
spaced, so that figures appear precisely
appear precisely opposite vacant
opposite vacant spaces in adjacent
spaces in adjacent rows.
rows.
VERTICAL INTERVAL
BETWEEN FIGURES 3" 3"
VERTICAL INTERVAL
BETWEEN SAME
POINT IN DESIGNS IN
SAME ROW 8½" 8 7/8 "
HORIZONTAL INTERVAL
BETWEEN FIGURES
IN ALTERNATE
ROWS 4½" 5 1/8 "
HORIZONTAL INTERVAL
BETWEEN SAME
POINT IN DESIGN IN
ALTERNATE ROWS 9 1/8 " 9 5/8 "
*421 It should be noted that these are "one-way" designs, to wit, all the figures face the same way. "One-way" designs are more expensive for the garment manufacturer to use and it is noteworthy that defendants have not only followed the details of plaintiff's design but also copied their use in a "one-way" design.
COMPARISON SUBMITTED BY DEFENDANTS
I
DIFFERENCES BETWEEN PLAINTIFF'S LION DESIGN
AND DEFENDANTS' DRAGON DESIGN
Plaintiff's Lion Design Defendants' Design
# 1546 Exhibit 1 Exhibit 2
Depicts a realistic lion with Depicts a fanciful four-footed animal
straight forelegs similar to a chinese drag-on-type
figure with bent forelegs
Lion is astride a spear or shaft No shaft or spear depicted
Lion appears to have a full mane Animal on defendants' design has
and bulky chest and neck small neck, chest and shoulders
and has no mane
Lion appears to be short-haired Defendants' animal has fleecy,
and smooth-furred shaggy, and irregular long
haired fur
Eyes only suggested in outline Clearly defined eyes
Lion's colorings are shaded and Coloring of defendants' animal is
outlined in three dimensional flat without effect of dimension
effect or depth
Natural life-like tail Tail has spears and tip of tail
spreads into five pants
Underbody of chest, belly and Thin contrasting streaky coloring
hind quarters have broad-strippled on neck, chest and on forelegs;
colorings no contrasting coloring on
underbody
Lion's form is in unbroken regular Outline of defendants' animal is
curved lines irregular, jagged, and spike-like
Lion's mouth is open with indication Defendants' animal does not show
of teeth and projecting open mouth and has long tongue
tongue in light color in same color as body of animal
Colorings of lion are deep and Colorings are flat and light with
shaded with three dimensional overall flat effect
effect
*422
II
DIFFERENCES BETWEEN PLAINTIFF'S CROWN ON
FOLIAGE DESIGN AND DEFENDANTS' CROWN ON
FOLIAGE DESIGN
Plaintiff's Design Defendants' Design
# 1572 Exhibit 3 Exhibit 4
High pointed crown height Low rounded crown width greater
greater than width than height of crown
Narrow open-work head band Wide solid head band
Crown comprises four upright Crown comprises seven closely-spaced
members enclosing a hemisphere upright members no
section of a globe globe or other object depicted
within crown
Crown imposed on closely-spaced Crown imposed on a bow and
fanciful impressionistic foliage spread out leafy stems in a
semi-circle around the crown;
crown and spreading stems rest
on spread out, well defined
scroll-like figure and on realistic
leafy stems
Colorings are shaded with three Colorings are bright unshaded
dimensional effect with flat effect
III
DIFFERENCES BETWEEN PLAINTIFF'S LOCK AND
KEY DESIGN AND DEFENDANTS' FILIGREE
ORNAMENT DESIGN
Plaintiff's Design Defendants' Design
# 1544 Exhibit 5 Exhibit 6
There are two principal design There are three principal design
figures, i. e., a conventional key figures, i. e.:
with scroll-like key handle and (1) an approximately diamond-shaped
an ornamental scroll work key-hole wavy outlined Slavonic
cover surmounted by a ornament with round hole in
crown center
(2) a scroll-like pointed figure,
and
(3) a scroll-like elongated ornamental
figure (like the figure
in 2 above) with the addition
of an ornamental cross figure
There is no crown on defendants'
Slavonic ornament in (1) above.
Colorings and outlines of design Colorings and outlines of figures
figures are deep and shaded in are substantially uniform in application
application, giving effect of dimension without shadings and
and depth with over-all flat effect
*423
IV
PLAINTIFF'S COAT OF ARMS DESIGN AND DEFENDANTS'
COAT OF ARMS DESIGN
Plaintiff's Design Defendant's Design
# 1605 Exhibit 7 Exhibit 8
A royal coat of arms comprised of A royal coat of arms comprised of
two crowned standing lions standing unicorn and a crowned
astride a shield surmounted by lion astride a shield surmounted
a crown, 2 leafs, and crowned by a open-work crown and
small lion figure winged fanciful animal
Coat of arms rests on two spreading Coat of arms rests on two scrolls
leaves and banner with leg-end and a grecian-type bowl. There
"PAX QUAERITUR BELLO" is no legend or motto below defendants'
coat of arms figure
Lions are shown in full face pose Unicorn and lion shown in side-view
profile pose
Heraldic shield is in conventional Heraldic shield is in flattened oval
shield form and shape shape
Heraldic shield has large diamond, Heraldic shield has small diamond
large fleur de lis, a harp and and triangles in three sections
two smaller shields, one in center and a small fleur de lis in lower
of heraldic shield and the left section of the shield
other in lower right corner of
heraldic shield
Colorings and outlines of figures Colorings and outlines are substantially
are shaded with effect of dimension uniform with over-all
and depth flat effect
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