273 F.3d 262 (2nd Cir. 2001), 00-7300, Boisson v Banian

Docket Nº:Docket No. 00-7300
Citation:273 F.3d 262
Case Date:December 03, 2001
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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273 F.3d 262 (2nd Cir. 2001)






Docket No. 00-7300

United States Court of Appeals, Second Circuit

December 3, 2001

Argued November 15, 2000

Plaintiff Judi Boisson and plaintiff/counter-defendant American Country Quilts and Linens, Inc., d/b/a Judi Boisson American Country, appeal from a judgment entered February 28, 2000 in the United States District Court for the Eastern District of New York (Platt, J.), which dismissed plaintiffs' claims of copyright infringement following a bench trial.

Affirmed in part; reversed in part; and remanded.

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Paul R. Levenson, New York, New York (Kaplan Gottbetter & Levenson, Llp, New York, New York, of counsel), for Plaintiff Judi Boisson and American Country Quilts and Linens, Inc.

G. Roxanne Elings, New York, New York (Sudipta Rao, Greenberg Traurig, Llp, New York, New York, of counsel), for Defendants Banian, Ltd. and Vijay Rao.

Before: Cardamone, Calabresi, Circuit Judges, and HAIGHT[*], District Judge.

Cardamone, Circuit Judge.

Plaintiffs Judi Boisson and her wholly-owned company, American Country Quilts and Linens, Inc., d/b/a Judi Boisson American Country, brought suit in the United States District Court for the Eastern District of New York (Platt, J.), alleging that defendants Vijay Rao and his wholly-owned company Banian Ltd., illegally copied two quilt designs for which plaintiffs had obtained copyright registrations. Following a bench trial, the trial court, in

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denying the claims of copyright infringement, ruled that defendants' quilts were not substantially similar to what it deemed were the protectible elements of plaintiffs' works. Plaintiffs have appealed this ruling. Copying the creative works of others is an old story, one often accomplished by the copyist changing or disfiguring the copied work to pass it off as his own. Stealing the particular expression of another's ideas is rightly condemned in the law because pirating the expression of the author's creative ideas risks diminishing the author's exclusive rights to her work, or as a poet said, taking all that she may be or all that she has been.

In reviewing this decision, we find plaintiffs' copyrights cover more elements than were recognized by the trial court, and that though the trial court articulated the proper test when comparing the contested works, its application of that test was too narrow. It failed not only to account for the protectible elements we identify, but also to consider the overall look and feel brought about by the creator's arrangement of unprotectible elements. Hence, we disagree with part of the district court's ruling and find some instances of copyright infringement. The trial court's disposition of those claims must therefore be reversed and remanded for a determination as to what remedies should be awarded.


Judi Boisson has been in the quilt trade for over 20 years, beginning her career by selling antique American quilts -- in particular, Amish quilts -- she purchased in various states throughout the country. By the late 1980s, having difficulty finding antique quilts, she decided to design and manufacture her own and began selling them in 1991 through her company. Boisson published catalogs in 1993 and 1996 to advertise and sell her quilts. Her works are also sold to linen, gift, antique, and children's stores and high-end catalog companies. Various home furnishing magazines have published articles featuring Boisson and her quilts.

In 1991 plaintiff designed and produced two alphabet quilts entitled "School Days I" and "School Days II." Although we later describe the quilts in greater detail, we note each consists of square blocks containing the capital letters of the alphabet, displayed in order. The blocks are set in horizontal rows and vertical columns, with the last row filled by blocks containing various pictures or icons. The letters and blocks are made up of different colors, set off by a white border and colored edging.

Boisson testified at trial that she worked on these quilts at home where she drew the letters by hand, decided on their placement in the quilts, picked out the color combinations and chose the quilting patterns. She obtained certificates of copyright registration for each quilt on December 9, 1991. All of her quilts, as well as the catalogs advertising them, include a copyright notice.

Defendant Vijay Rao is the president and sole shareholder of defendant Banian Ltd., incorporated in November 1991. Rao is an electrical engineer in the telecommunications industry who became interested in selling quilts in February 1992. To that end, he imported from India each of the three alphabet quilts at issue in this case. He sold them through boutique stores and catalog companies. The first quilt he ordered was "ABC Green Version I," which he had been shown by a third party. Defendants have not sold this pattern since 1993. "ABC Green Version II" was ordered in September 1994, based upon modifications to "ABC Green Version I" requested by Rao. Defendants reordered this quilt once in April 1995, and then

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stopped selling it in March 1997. Regarding "ABC Navy," Rao testified that he designed the quilt himself based upon "ABC Green Version II" and imported finished copies in November 1995. Defendants voluntarily withdrew their "ABC Navy" quilts from the market in November 1998 following the initiation of this litigation.

Plaintiffs filed their suit in March 1997 seeking relief from defendants for copyright infringement, false designation of origin and unfair competition. Plaintiffs also alleged causes of action pertaining to a quilt involving a star design, but the parties agreed to dismiss those claims. Defendants counterclaimed against American Country Quilts and Linens for interference with commercial relations.

The district court held a three-day bench trial in October 1999 at which documentary evidence was received and a number of witnesses testified. The witnesses were Boisson; her daughter, who related having seen and photographed one of defendants' alphabet quilts at a trade show; plaintiffs' expert witness, who testified regarding the similarities between plaintiffs' and defendants' quilts; defendant Rao; and defendants' expert witness, who testified as to the history of alphabet quilts. At the conclusion of the trial, the district court dismissed all of plaintiffs' claims, dismissed defendants' counterclaim and denied defendants' motion for attorney's fees in a memorandum and order dated February 14, 2000. Plaintiffs have appealed from the judgment entered February 28, 2000, challenging only that part of the order and judgment that dismissed their copyright infringement claims.


Copyright infringement is established by proving "ownership of a valid copyright" and "copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Throughout the following analysis the key consideration is the extent to which plaintiffs' work is original. See id. at 361-64, 111 S.Ct. 1282.

I. Ownership of a Valid Copyright

The Copyright Act provides that a "certificate of [copyright] registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright." 17 U.S.C. § 410(c) (1994). Boisson secured certificates of registration for both "School Days" quilts in 1991, the same year in which she designed them, so that we must presume she holds valid copyrights. Although such a presumption may be rebutted, Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 763 (2d Cir. 1991), the district court found there was insufficient proof to support defendants' argument that plaintiffs deliberately misled the Copyright Office when submitting their applications. By not challenging that finding on appeal, defendants concede the validity of plaintiffs' copyrights.

II. Actual Copying of Plaintiffs' Work

The element of copying breaks down into two parts. Plaintiffs must first show that defendants "actually copied" their quilts. Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 747 (2d Cir. 1998). Actual copying may be established by direct or indirect evidence. Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992). Indirect evidence may include proof of "access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony." Id. The district court made a finding that actual copying had occurred, and because defendants do not dispute that finding,

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actual copying is also established. But not all copying results in copyright infringement, even if the plaintiff has a valid copyright. Feist Publ'ns, 499 U.S. at 361. Plaintiffs must also demonstrate "substantial similarity" between defendants' quilts...

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