Tufenkian Import/Export Vent. v. Einstein Moomjy

Citation237 F.Supp.2d 376
Decision Date22 April 2002
Docket NumberNo. 99 CIV. 11182(WHP).,99 CIV. 11182(WHP).
PartiesTUFENKIAN IMPORT/EXPORT VENTURES, INC., Plaintiff, v. EINSTEIN MOOMJY, INC., Bashian Brothers, Inc., A.L. Meyers Furniture, Central Carpet Co., Kenneth L. Mink & Sons, Inc., Home Depot, Inc., Michael Nichols-Marcy, and Noreen Seabrook Marketing, Inc., Defendants.
CourtU.S. District Court — Southern District of New York

Mark Landau, William Thomashower, Fran Obeid, Kaplan, Thomashower & Landau LLP, New York City, for plaintiff.

Lawrence D. Mandel, Mandel & Peslak, LLC, Freehold, NJ.

Marsha G. Ajhar, Abelman, Frayne & Schwab, New York.

MEMORANDUM AND ORDER

PAULEY, District Judge.

This case tests the boundaries of copyright protection for a derivative textile design based largely on public domain sources. Plaintiff Tufenkian Import/Export Ventures, Inc. ("Tufenkian Import") alleges that defendants infringe its copyright in its Floral Heriz rug design by selling and distributing a substantially similar rug titled the Bromley 514. Defendants counter that the Bromley 514 is derived substantially from public domain designs and does not infringe Tufenkian Import's copyright. The parties' dueling motions for summary judgment are before this court. For the reasons that follow, defendants' motion for summary judgment is granted and plaintiff's motion is denied.

BACKGROUND

In 1993, James Tufenkian ("Tufenkian"), president of Tufenkian Import, created the Floral Heriz rug. (Pl. Rule 56.1 Stmt. Supp. Summ. J. at 1; Bashian Rule 56.1 Stmt. Supp. Summ. J. ¶ 11; see App. 1.) Tufenkian began designing the rug by scanning into a computer two works in the public domain: a Persian rug sold by Battilossi, (the "Battilossi rug") and an Indian Agra rug designed by Doris Blau (the "Blau rug"). (Tufenkian Dep. at 39-45, 47-50; see Apps. 2 and 3.) Tufenkian had found an advertisement for the Battilossi rug in a July 1986 edition of Hali, the International Magazine of Antiques, Carpets and Textiles (the "Hali magazine") and used a portion of it as the basis for the center field of the Floral Heriz. (Tufenkian Dep. at 41-42.) Once he had scanned the advertisement into his computer, he removed some of the rug's design elements to open the space, reconfigured the remaining elements, and elongated the design in order to "create the openness that [he] was looking for." (Tufenkian Dep. at 44.) Since Tufenkian's ultimate goal was to create an "all-over design ... [with] no central focus" (Tufenkian Dep. at 44), he created an asymmetrical pattern instead of maintaining the Battilossi's symmetry. However, he admittedly preserved the "existing elements and ... arrangement" of the original Battilossi. (Tufenkian Dep. at 43.)

For the primary border of the Floral Heriz, Tufenkian adapted the primary border of the Blau rug. Similar to his treatment of the Battilossi design, Tufenkian simplified the original Blau border by removing the smaller elements and maintaining the larger, primary ones in order to open the space between them. (Tufenkian Dep. at 47-49.)

Between the modified Battilossi center and the modified Blau border, Tufenkian inserted a thin, minor border inspired by "Gebbah" Persian carpets. (Tufenkian Dep. at 49.) That border features "primitive" animal stick figures evenly spaced around the rug. (Tufenkian Dep. at 50.) He also created a thin, minor border consisting of castle-like forms side-by-side around the outermost edge of the rug.

Tufenkian applied to the Copyright Office for a copyright registration certificate. Although he had previously submitted applications for certificates of registration identifying other works as derivative, the application he submitted for the Floral Heriz gave no such indication. (Bashian Rule 56.1 Stmt. Supp. Summ. J. ¶ 12; Thomashower Aff. Ex. C: Floral Heriz Reg. Cert. ¶ 6.) The application states that the work was completed in 1995 and first published on January 15, 1995. (Thomashower Aff. Ex. C: Floral Heriz Reg. Cert. ¶ 3.) The Copyright Office issued a registration certificate for the Floral Heriz design, effective March 20, 1995, the date the Copyright Office received the application, fee and deposit. (Thomashower Aff. Ex. C.)

In 1995, Bashian Brothers, Inc ("Bashian") hired Michael Nichols-Marcy ("Marcy") as a creative consultant to help design the Bromley 514. Marcy previously worked for Tufenkian from 1986 to 1989, after which he founded defendant Noreen Seabrook Marketing. (Marcy Dep. at 23-24, 14; Ralph Bashian Dep. at 10.) Tufenkian Import alleges that Marcy, as one of its former employees, knew of the Floral Heriz's commercial popularity and copied its design to ensure the success of his first design project for Bashian. (Pl.'s Mem. of Law in Supp. of its Summ. J. Mot. at 5-8.)

Marcy created the Bromley 514 with a designer from Nepal Carpet Enterprises ("Nepal Carpet"), a manufacturing and design group located in Kathmandu, Nepal. Marcy maintains that he conceived of the Bromley 514 in May 1996 and that he was not aware of the Floral Heriz design at that time. (Marcy. Dep. at 14, 50.) However, he learned of the Floral Heriz design during the creation of the Bromley 514, and was aware of it when he reviewed the draft carpet Nepal Carpet constructed. (Marcy Dep. at 50-51, 57-58, 71.) Nepal Carpet had a copy of Tufenkian's advertisement for the Floral Heriz when it created the Bromley 514. (Marcy Dep. at 82.) According to Marcy, the center field of the Bromley 514 derives from the Battilossi advertised in the July 1986 edition of Hali magazine. (Marcy Dep. at 32-34, 69; see App. 4.)

When Marcy reviewed the draft prototype of the Bromley 514 that Nepal created, he thought the primary border was "somewhat ugly" and too similar to Tufenkian's modified Blau design. (Marcy Dep. at 50, 81-82, 84.) Marcy, who did not know what had inspired Nepal Carpet to create that border, directed Nepal Carpet to modify it to add "more detail and more balance." (Marcy Dep. at 84.) The Bromley 514 also replicates the Floral Heriz minor outer border filled with castle-like figures and a minor inner border with primitive, animal stick figures, albeit in different shapes. (Compare App. 1 with App. 4.)

In its motion for summary judgment, plaintiff asserts that defendants intentionally copied the Floral Heriz design and therefore infringed plaintiff's copyright. (Pl.'s Mem. Supp. Summ. J. at 9-12.) Plaintiff also contends that the Floral Heriz is not a derivative work, but rather a design that is substantially different from the Battilossi and Blau rugs such that it is entirely copyrightable. (Pl.'s Mem. Supp. Summ. J. at 14, Pl.'s Reply at 7-8.) In alleging that the Bromley 514 is substantially similar to the Floral Heriz design, plaintiffs assert that the similarities should be reviewed from the vantage of an ordinary observer. (Pl.'s Mem. Supp. Summ. J. at 7.)

Defendants respond that plaintiff's copyright registration certificate is invalid and allege that plaintiff engaged in fraud on the Copyright Office by failing to identify the Floral Heriz design as a derivative work. (Defs.' Opp. at 8-13.) Defendants further contend that a genuine issue of material fact exists concerning whether there is direct evidence of their alleged copying of the Floral Heriz. (Defs.' Opp. at 13-15.) Defendants assert that the Floral Heriz is a derivative work only subject to a narrow copyright in Tufenkian's original contributions. (Defs.' Opp. at 16-20.) Moreover, defendants assert that a discerning observer's perspective should be used when determining whether the Bromley 514 is substantially similar to the Floral Heriz design. (Defs.' Opp. at 20-23.)

DISCUSSION
I. Summary Judgment Standards

Summary judgment may be granted only when there is no genuine issue of material fact remaining for trial, and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c). The burden of demonstrating the absence of any genuine dispute as to a material fact rests with the moving party. See Grady v. Affiliated Cent., Inc., 130 F.3d 553, 559 (2d Cir.1997). Materiality is determined by the governing substantive law, Dister v. Continental Group, Inc., 859 F.2d 1108, 1114 (2d Cir.1988), in this case the Copyright Act. Repp v. Webber, 132 F.3d 882, 890 (2d Cir.1997). An issue of fact is "material" if it might "affect the outcome of the suit under the governing law [while] an issue of fact is `genuine' if the evidence is such that a reasonable jury could return a verdict for the non-moving party." Shade v. Housing Auth. of New Haven, 251 F.3d 307, 314 (2d Cir.2001). In determining whether the movant has met this burden, this Court must resolve all ambiguities and draw all permissible factual inferences in favor of the party opposing the motion. Flanigan v. General Elec. Co., 242 F.3d 78, 83 (2d Cir.2001); cert. denied, 534 U.S. 1065, 122 S.Ct. 665, 151 L.Ed.2d 580 (2001).

If the moving party meets its initial burden, the non-moving party must then come forward with "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(c); Carlton v. Mystic Transp., Inc., 202 F.3d 129, 133 (2d Cir. 2000). The non-moving party must "do more than simply show there is some metaphysical doubt as to the material facts," Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986), and "may not rely on conclusory allegations or unsubstantiated speculation." Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir.1998). Where it is apparent that no rational finder of fact "could find in favor of the non-moving party because the evidence to support its case is so slight," summary judgment should be granted. Gallo v. Prudential Residential Servs., Ltd., 22 F.3d 1219, 1223 (2d Cir.1994). "The mere existence of a scintilla of evidence in support of the (nonmovant's) position will be insufficient." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d...

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