GMA Accessories, Inc. v. Olivia Miller, Inc.

139 F. App'x 301
CourtCourt of Appeals for the Second Circuit
DecidedJuly 5, 2005
DocketDocket No. 04-4465-CV
StatusPublished
Cited by4 cases

This text of 139 F. App'x 301 (GMA Accessories, Inc. v. Olivia Miller, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Second Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
GMA Accessories, Inc. v. Olivia Miller, Inc., 139 F. App'x 301 (2d Cir. 2005).

Opinion

SUMMARY ORDER

UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED that the judgment of the District Court is AFFIRMED.

GMA Accessories, Inc. (“GMA”) appeals the district court’s award of $2,000 in statutory damages and $5,000 in attorney’s fees in its copyright infringement action against Olivia Miller, Inc. (“Olivia Miller”). GMA argues (1) that the district court erred in finding that Olivia Miller’s admitted infringement was not willful within the meaning of the Copyright Act, 17 U.S.C. § 504(c)(2); and (2) that the district court’s fee award was too low, in light of Olivia Miller’s assertion of a frivolous defense and its failure to comply fully with the terms of a preliminary injunction. For the reasons stated below, we affirm the district court’s judgment.

Background

Olivia Miller manufactures and imports casual footwear that it then sells to retailers and other wholesalers. Sometime in late fall 2002, Olivia Miller was approached by a representative of Deb Shops, a retailer and customer of Olivia Miller’s, with a request to replicate a floral pattern on a “flip-flop.” It appears as though the model flip-flop that the Deb Shops representative presented to Olivia Miller did not contain a copyright notice. Rather, a copyright notice had apparently been placed only on the connecting “hang-tag,” which was not attached to the flip-flop that the Deb Shops representative presented. Olivia Miller agreed to replicate the design, and Deb Shops placed an initial order of 600 pairs, with a back-up order of an additional 600 pairs if necessary. Deb Shops eventually returned 132 of the flip flops, leaving Olivia Miller with a profit of $712.20.

GMA creates original designs that it places on clothing and footwear. One such GMA design was the floral pattern that Olivia Miller agreed to replicate for Deb Shops. According to GMA, a GMA employee noticed the design at issue on a flip-flop on sale at a Rockland County retail store on June 8, 2003. Just over three weeks later, on June 30, 2003, GMA began the present suit charging Olivia Miller with copyright infringement in violation of the Copyright Act.1

[303]*303The following day, Chief Judge Mukasey issued a “show-cause order” to Olivia Miller, with a hearing set for July 10, 2003. As no representative of Olivia Miller attended the show-cause hearing, the Chief Judge issued a default preliminary injunction against Olivia Miller. The order enjoined Ohvia Miller from, inter aba, importing, manufacturing, selling, or marketing merchandise containing the allegedly infringing design. The order also required Obvia Mbler to forward a copy of the preliminary injunction to its supplier and to those of its customers who had received merchandise bearing the allegedly infringing design.

Apparently satisfied by a representation from a Deb Shops employee that it would not be difficult to settle the conflict with GMA, Olivia Mbler did not forward a copy of the preliminary injunction either to its customers or to its supplier, and did not file an answer to GMA’s complaint untb August 22. In its answer, Olivia Mbler denied GMA’s claims and argued, inter aba, that GMA had fabed to state a cause of action, that GMA did not own the copyright, and that the allegedly infringing designs were “independently created.” On October 3, 2003, GMA filed a motion for contempt, having learned in mid-September that Olivia Miller had not fully compbed with the preliminary injunction.

In early November 2003, Obvia Mbler conceded babbity. At a December 10 damages hearing, the district court found that Obvia Mbler’s infringement was not wblful, and set statutory damages at $2,000. At a June 2004 attorney’s fees hearing, the court awarded GMA $5,000 in fees, against its claim of $37,000. GMA appeals the size of both the damages award and of the attorney’s fees granted. Specifically, GMA argues that the court’s damages award is premised in part on an incorrect finding of non-willfulness. GMA also contends that the court should have ordered payment to it of the fees expended in attempting to secure Olivia Mbler’s compbance with the preliminary injunction.

1. Willful Infringement

We review a district court’s factual determination of wblful copyright infringement for clear error. Hamil America, Inc., v. GFI, 193 F.3d 92, 97 (2d Cir.1999). In so doing, we “give particular deference to determinations regarding witness eredibbity.” Id. “The standard is simply whether the defendant had knowledge that its conduct represented infringement or perhaps recklessly disregarded that possibbity.” Id. (internal quotation marks omitted). Knowledge that an infringer’s conduct represents infringement may be either actual or “constructive.” Island Software & Computer Serv. v. Microsoft Corp., 413 F.3d 257, 264 (2d Cir.2005) (noting that a plaintiff can prove willfulness “by proffering circumstantial evidence that gives rise to an inference of wblful conduct”).

We cannot say on this record that the district court’s determination that Olivia Miller’s copyright infringement was nonwblful was clearly erroneous. Chief Judge Mukasey based his finding on the testimony of the Olivia Mbler sales manager, that the floral pattern she was shown did not bear a copyright notice. The court also noted, moreover, that Obvia Mbler had never before been sued for copyright infringement, and generaby is “dbigent about assuring that it does not reproduce protected designs.” A reasonable trier of fact could have concluded, as the district court did, that Obvia Mbler neither had knowledge that its actions represented in[304]*304fringement nor had recklessly disregarded the possibility.2

GMA contends that Olivia Miller’s failure to comply with the terms of the July 2003 preliminary injunction “goes beyond innocent ignorance.” To be sure, we have held that an infringer’s demonstrated awareness of the plaintiffs allegations can constitute constructive knowledge sufficient to compel a finding of willfulness. See, e.g., N.AS. Import Corp. v. Chenson Enters., 968 F.2d 250, 252-53 (2d Cir.1992) (reversing the district court’s finding of non-willful infringement where the defendant’s attorney sent a letter promising to cease infringing and the infringement, instead, continued). The district court took notice of Olivia Miller’s failure to circulate timely a copy of the preliminary injunction to its customers and its supplier. But the court noted in connection with this failure that Olivia Miller’s sales manager had relied on a statement of a Deb Shops representative that, as the district court stated, allowed Olivia Miller to believe that “the matter was minor and was being worked out.” In light of the record in its entirety, the district court was free to infer from these facts that Olivia Miller’s infringement was not willful. See Anderson v. Bessemer City, 470 U.S. 564, 574, 105 S.Ct.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Beastie Boys v. Monster Energy Co.
112 F. Supp. 3d 31 (S.D. New York, 2015)
Emi Entertainment World, Inc. v. Karen Records, Inc.
806 F. Supp. 2d 697 (S.D. New York, 2011)

Cite This Page — Counsel Stack

Bluebook (online)
139 F. App'x 301, Counsel Stack Legal Research, https://law.counselstack.com/opinion/gma-accessories-inc-v-olivia-miller-inc-ca2-2005.