## Facts

- An artist created three nursery-themed pictorial designs: “My Bear,” “Pastel Playmates,” and “Country Traditions.”
- A nursery-products company used the designs on nursery storage jars and related products.
- The artist registered all three designs in April 1986.
- In October 1985, the company displayed products bearing alleged copies of “My Bear” and “Pastel Playmates” at an industry trade show limited to members and qualified buyers.
- By January 1986, the company began importing products bearing those two designs for commercial sale.
- In December 1985, the company sent the “Country Traditions” design and instructions to an overseas manufacturer to produce samples, authorizing reproduction.
- The parties filed cross-motions for partial summary judgment limited to whether statutory damages and attorney’s fees were available given the timing of registration; discovery motions also addressed privilege and production disputes.

## Issues

1. Whether displaying allegedly infringing products at a restricted industry trade show is a “public display” that commences infringement, triggering the bar on statutory damages and attorney’s fees under 17 U.S.C. § 412.
2. Whether authorizing an overseas manufacturer to reproduce a design (by sending the design and instructions to make samples) commences infringement for purposes of § 412.
3. Whether certain requested discovery materials were properly withheld under attorney-client privilege and what production or in camera review was required.

## Decision

- The court granted the defendant’s motion for partial summary judgment and denied the plaintiff’s competing motion on statutory damages and attorney’s fees.
- The October 1985 trade show exhibition was a “public display,” so infringement of “My Bear” and “Pastel Playmates” commenced before registration.
- The December 1985 authorization to an overseas manufacturer to reproduce “Country Traditions” commenced infringement before registration.
- Because infringement for each design commenced more than three months before April 1986 registration, § 412 barred statutory damages (17 U.S.C. § 504(c)) and attorney’s fees (17 U.S.C. § 505) for all three designs.
- The court granted in part and denied in part the plaintiff’s discovery motions, sustaining privilege for some materials and ordering limited production and/or in camera review for others.

## Legal Principles

- Under 17 U.S.C. § 412, statutory damages and attorney’s fees are unavailable when infringement “commenced” before the effective date of registration, absent timely registration within the statutory grace period.
- A display can be “public” under 17 U.S.C. § 106(5) even if access is restricted, when shown to a substantial number of persons beyond a normal family and social circle.
- Infringement may commence through acts other than retail sales, including pre-sale public display of infringing goods.
- Authorization to reproduce a copyrighted work can constitute an infringing act under 17 U.S.C. § 106(1) and can commence infringement for § 412 purposes.
- Attorney-client privilege protects qualifying legal communications; courts may use in camera review to resolve privilege disputes and order limited production where appropriate.

## Conclusion

The court held that infringement began before registration because the defendant publicly displayed products at a restricted trade show and separately authorized overseas reproduction of another design, so § 412 barred statutory damages and attorney’s fees, leaving the plaintiff to pursue actual damages and other non-barred relief.


Thomas v. Pansy Ellen Prods., Inc., 672 F. Supp. 237 (W.D.N.C. 1987)