Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc.

338 F.3d 127 (2nd Cir. 2003)

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Nature of the Case

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Facts

In March 1995, P filed a copyright registration for the 'Floral Heriz' (Heriz) carpet design. P created the design two years earlier by scanning into his computer two public domain images, one of the 'Battilossi' carpet (a Persian antique), the other of the 'Blau' carpet (an Indian Agra, designed by Dorris Blau). modified the two public domain carpets to create his own unique design. P describes his principal creative contributions as: (1) combining two unrelated rug styles; (2) designing and adding the minor borders; (3) selectively removing entire design motifs from the Battilossi so as to create a more 'open' aesthetic from those remaining; (4) converting the symmetrical Battilossi image into a design 'with no central focus' (by copying from only half of the Battilossi field); and (5) elongating the Battilossi pattern. D retained Nichols-Marcy to oversee the designing of the 'Bromley 514' (Bromley) for D. These designers were familiar with the Heriz, and Ds do not challenge the district court's determination that some copying of the Heriz actually occurred. Ds contend that Heriz's extensive use of designs taken from the public domain combined with Bromley's distinctiveness precludes a finding of infringement. Ds point to the following as instances of their own creative work that distinguishes the Bromley from the Heriz: (1) addition of a second 'beetle' (or 'flower') element to the field, placed in a roughly symmetrical position to an existing 'beetle' shape so as to give the Bromley a more balanced feel than the Heriz; (2) retention of a 'leaf shape' from the Battilossi that Tufenkian did not include in the Heriz; (3) removal of a vine-like line segment from the Battilossi that P had retained; and (4) greater modification of the Blau border design, with 'different shapes at different angles.' In November 1999, P sued claiming copyright infringement and seeking various injunctive and monetary remedies. Both moved for summary judgment. The trial court held that 'the prominent public domain elements incorporated into Floral Heriz . . . play a significant role in the overall appearance of plaintiff's work.' The district court 'factored out' those elements from the substantial similarity comparison, explaining that to do otherwise 'would grant plaintiff protection to public domain elements that the public has a right to copy.' The court also held that the Heriz contained various 'protectable elements.' The district court further stated that it would also factor out 'those elements which are original to defendants,' among these the fact that 'defendants incorporated flower elements in the center field not found in plaintiff's design.' Having identified the plaintiff's and the defendants' original contributions, the district court concluded that a finding of lack of infringement was 'ineluctable.' The district court concluded that 'P infused [the Heriz] with sufficient originality to support copyright protection;' that Bashian (D) actually copied the Heriz; but that the Bromley was not substantially similar to the protected expression in the Heriz. The court had applied what is called the 'more discerning observer' test. The district court 'appreciated that Ds did copy, in modified form, a few elements original to P,' the court concluded that 'those elements (especially in their modified form) do not change the different total concept and feel of the two works.' The court therefore awarded summary judgment to Bashian (D).