Peter Pan Fabrics, Inc. And Henry Glass & Co. v. Martin Weiner Corp.

274 F.2d 487, 124 U.S.P.Q. (BNA) 154, 1960 U.S. App. LEXIS 5506

• Court: Court of Appeals for the Second Circuit
• Decided: January 27, 1960
• Docket: 90, Docket 25716
• Status: Published

Opinions

HAND, Circuit Judge.

This is an appeal from a preliminary injunction, granted by Judge Herlands, forbidding the defendant to copy an ornamental design, printed upon cloth. The plaintiffs — which for the purposes of this appeal are to be regarded as one —and the defendant are both “converters” of textiles, used in the manufacture of women’s dresses. A “converter” buys uncolored cloth upon which he prints ornamental designs, and which he then sells to dressmakers. The plaintiffs bought from a Parisian designer a design, known as “Byzantium,” which it registered as a “reproduction of a work of art," (§ 5(h) of Title 17 U.S. Code) and for which the Copyright Office issued Certificate No. H.7290. This design they print upon uncolored cloth, sold in bolts to dressmakers. The cloth, so “converted,” bears upon its edge at each repetition of the design printed “notices” of copyright which are concededly adequate under the Copyright Law. The buyers of the bolts cut the cloth into suitable lengths and use it to make women’s dresses; but in doing so, they either altogether cut off the selvage which bears the notices, or else they sew the adjacent edges of the cloth together at the seams in such a way that the notices are not visible unless the seams are pried, or cut, apart, or unless the dress is turned inside out. The appeal raises two questions: (1) whether the defendant has in fact copied so much of the registered design as to infringe the copyright; and (2) whether the design was dedicated to the public, because it was sold without adequate notice of copyright as required by § 10 of the statute.

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 staled 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. 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.

The second question is whether the plaintiffs have forfeited their copyright. As we have said, there is no question that the bolts of cloth were adequately marked to comply with § 10, for a notice was “affixed to each copy * * offered for sale”; and, it appeared at intervals along the selvage, so that no one using the cloth could avoid seeing it. However, although the notices served the purpose of advising those who bought, or dealt with, the bolts, they did not give adequate notice to those who bought, or wore, dresses made of the cloth, for, when not altogether cut off, they were so placed as to be most unlikely to be detected. Section 21 of the act provides that the “omission by accident or mistake of the prescribed notice from a particular copy or copies shall not invalidate the copyright”; but the effective suppression of this mark on dresses is neither accidental nor mistaken; and sales with a deliberate omission of notice will forfeit the copyright (National Comic Publications, Inc. v. Fawcett Publications, Inc., 2 Cir., 191 F.2d 594; Id., 2 Cir., 198 F.2d 927. Therefore, if we construe the words of § 10 with relentless literalism, dresses made out of the “converted” cloth may be said to be “offered for sale” without any effective notice. In support of such an interpretation it may be argued that the doctrine, expressio unius, exclusio alLerius, would apply: that is to say, since Congress made only “omission by accident or mistake” an excuse we must not enlarge the exemption.

On the other hand, it is a commonplace that a literal interpretation of the words of a statute is not always a safe guide to its meaning. Indeed, in extreme situations this doctrine has been carried so far that language inescapably covering the occasion has been disregarded when it defeats the manifest purpose of the statute as a whole. Holy Trinity Church v. United States, 143 U.S. 457, 12 S.Ct. 511, 36 L.Ed. 226; Markham v. Cabell, 326 U.S. 404, 66 S.Ct. 193, 90 L.Ed. 165; Cawley v. United States, 2 Cir., 1959, 272 F.2d 443. We need not go so far in the ease at bar. In the first place it is hard to see how “notice” can said to be “affixed” to a “design” when it is incorporated into it; the copyrighted “work” will itself be changed, even though the change be so immaterial as not to impair the aesthetic appeal of the “design.” Be that as it may, we do not hold that in no circumstances will it be possible to “affix notice” upon a “design” which will be still visible when the cloth has been made up into a garment. We do hold that at least in the case of a deliberate copyist, as in the case at bar, the absence of “notice” is a defence that the copyist must prove, and that the burden is on him to show that “notice” could have been embodied in the design without impairing its market value. The defendant asserts that this can be done but it has offered no evidence that it can be. Whatever may be shown at the trial, upon this record we hold that the “design” should be protected, pendente lite.

Order affirmed.