338 F.3d 127 (2nd Cir. 2003), 02-7623, Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc.

Docket Nº:02-7623
Citation:338 F.3d 127
Party Name:Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc.
Case Date:July 30, 2003
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 127

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

67 U.S.P.Q.2d 1622



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-Appellees.

No. 02-7623.

United States Court of Appeals, Second Circuit

July 30, 2003

Argued: Jan. 29, 2003.

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[Copyrighted Material Omitted]

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Robert W. Clarida, Cowan, Liebowitz & Latman, New York, NY, for Plaintiff-Appellant.

Lawrence D. Mandel, Mandel & Peslak, LLC, Freehold, NJ; (Arthur M. Peslak, Mandel & Peslak; David A. Jackson, Klauber & Jackson, Hackensack, NJ; William Patry, Baker Botts, New York, NY; Marsha Ajhar, Abelman, Frayne & Schwab, New York, NY, on the brief), for Defendants-Appellees.

Before: OAKES, CALABRESI, and SOTOMAYOR, Circuit Judges.

CALABRESI, Circuit Judge.

This copyright infringement case involves two textile designs, each of which combines, with modifications, the "primary border" and the "half field" of two unrelated public domain carpets, one a classical Indian Agra and the other a Persian antique. Viewed uncritically, the two designs at issue are substantially similar. For the defendant's rug to infringe upon the plaintiff's design, however, the defendant's composition must be substantially similar to that which is original in the plaintiff's expression. The district court (S.D.N.Y., Pauley, J.) found no infringement, concluding as a matter of law that whatever substantial similarity there may be emerges from unprotected public domain materials in the allegedly infringed design. See Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 237 F.Supp.2d 376 (S.D.N.Y.2002). We disagree.


In March 1995, James Tufenkian, a designer and manufacturer of Tibetan style carpets, filed a copyright registration for the "Floral Heriz" ("Heriz") carpet design that is the subject of this lawsuit. He had composed the Heriz 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). The field of the Battilossi rug is a dense, bilateral symmetrical design of stylized branching-vine, leaf and flower motifs. Tufenkian selected roughly the central third of the upper1 half of this Battilossi field. From this dense pattern, he culled out a number of motifs. He then stretched the field slightly in one direction and used the thus modified design as the entire field of the Heriz. In the process, Tufenkian created an asymmetrical pattern, for he used only an off-center portion of what had been a symmetrical design. From the Blau, he took the principal border, which, with modifications, became the major border of the Heriz. Finally, he added two minor borders of his own creation. One of these consists of stick-figure animals, the other of even simpler, castle-like figures.

Tufenkian 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

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into a design "with no central focus" (by copying from only half of the Battilossi field); and (5) elongating the Battilossi pattern.

Sometime in 1995, Appellee Bashian retained Appellee Nichols-Marcy, who had worked for Tufenkian, to oversee the designing of the "Bromley 514" ("Bromley"). Nichols-Marcy and his Nepalese contractors began work on the Bromley in early 1996, two years after the Heriz was first marketed. These designers were familiar with the Heriz, and the appellees do not challenge the district court's determination that some copying of the Heriz actually occurred.

Nonetheless, the appellees contend that the Heriz's extensive use of designs taken from the public domain combined with the Bromley's distinctiveness precludes a finding of infringement. In the latter regard, they 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 Tufenkian had retained; and (4) greater modification of the Blau border design, with "different shapes at different angles."

In November 1999, Tufenkian initiated this lawsuit, claiming copyright infringement and seeking various injunctive and monetary remedies. Both parties moved for summary judgment on the issue of copyright infringement.2 The district court concluded that "Tufenkian infused [the Heriz] with sufficient originality to support copyright protection," Tufenkian, 237 F.Supp.2d at 384; that Bashian actually copied the Heriz, id. at 385-86; but that the Bromley 514 was not substantially similar to protected expression in the Heriz, id. at 386-88. The court therefore awarded summary judgment to Bashian.

The district court evaluated infringement by comparing the two designs' "total concept and feel" (or "overall aesthetic"). In so doing the court applied what we have called the "more discerning observer" test, Boisson v. Banian, Ltd., 273 F.3d 262, 271 (2d Cir. 2001), a test intended to emphasize that substantial similarity must exist between the defendant's allegedly infringing design and the protectible elements in the plaintiff's design. Noting 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 "factor[ed] 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." Id. at 387. Nonetheless, the court specified that the Heriz contained various 'protectible elements' including: "[the] removal of certain elements to create open space, the asymmetrical pattern, the elongation of the design adapted from the body of the Battilossi rug, the creation of the castle and stick figure animal borders, and the ordering and placement of all of these elements into a harmonious whole ...." Id. The district court further stated that it would also factor

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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." 3 Id. at 387-88.

Having identified the plaintiff's and the defendants' original contributions, the district court concluded that a finding of lack of infringement was "ineluctabl[e]": "[t]he Bromley 514's overall aesthetic is due to the public domain sources and to defendants' own efforts," rather than to any copying of protectible aspects of the Heriz. Id. at 388. To illustrate the lack of substantial similarity, the district court recited a number of differences between the rugs, including the fact that "[d]efendants' design is symmetrical, while plaintiff's is asymmetrical, a difference which creates substantial changes in the total concept and feel of the two works, given that both are substantial copies of the public domain Battilossi." Id. While the district court "appreciate[d] that defendants did copy, in modified form, a few elements original to plaintiff," the court concluded that "those elements (especially in their modified form) do not change the different total concept and feel of the two works." Id.



A. Standard of Review

We review a summary judgment of non-infringement de novo. Williams v. Crichton, 84 F.3d 581, 587 (2d Cir. 1996). Our familiar task is to determine "whether a genuine issue as to any material fact exists and whether the moving party was properly entitled to judgment as a matter of law." Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1071 (2d Cir. 1992) (internal quotation marks omitted). "In making this determination, we view all inferences in the light most favorable to the non-moving party ...." Id.

B. The Test for Copyright Infringement

"Copyright infringement is established when the owner of a valid copyright demonstrates unauthorized copying." Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137-38 (2d Cir. 1998) (internal quotation marks omitted). To demonstrate unauthorized copying, the plaintiff must first "show that his work was actually copied"; second, he must establish "substantial similarity" or that "the copying amounts to an improper or unlawful appropriation," i.e., (i) that it was protected expression in the earlier work that was copied and (ii) that the amount that was copied is "more than de minimis." Id. at 137-38. The defendant can defeat a prima facie showing of infringement by proving that the doctrine of "fair use" permits her employment of the plaintiff's design. Id. at 141-46. In the appeal before us, however, the defendants do not mount a fair use defense, nor do they contest the district court's findings of ownership and actual copying. Substantial similarity is therefore the only issue we face. But substantial similarity, we emphasize again, must be to that which is protected in the plaintiff's work.

C. The Scope of Copyright Protection: Original Expression

"[O]riginality is 'the sine qua non of copyright,' " Boisson, 273 F.3d at 268 (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv...

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