Condotti, Inc. v. Slifka, 223 F. Supp. 412 (S.D.N.Y. 1963)

US District Court for the Southern District of New York - 223 F. Supp. 412 (S.D.N.Y. 1963)
October 21, 1963

223 F. Supp. 412 (1963)

CONDOTTI, INC., Plaintiff,
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.

October 21, 1963.

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).

                                     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.
  FIGURES                   2¾"                      3"
  ROWS                 5 5/8 "                  5 5/8 "
COLOR                 3 colors plus background   3 colors plus background
                        color                      color
                                                    COPYRIGHT NO. K-66802
                          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
                      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.
 BETWEEN FIGURES           2½"                        2¾"
  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
                         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.
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.
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)
BETWEEN FIGURES             3 5/8 "                     3¾"
SAME ROW                    7¾"                      7¾"
ROWS                           4"                       3½"
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.

                                 COPYRIGHT NO. K-67154
                          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.
BETWEEN FIGURES                3"                     3"
SAME ROW                     8½"                 8 7/8 "
ROWS                         4½"                 5 1/8 "
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.

    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
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
                  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
                      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,
                                             (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
               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