Kim Seng Co. v. J&A Importers, Inc.

• Decision Date: 30 August 2011
• Docket Number: Case No. CV10–742 CAS (MANx).
• Court: U.S. District Court — Central District of California
• Parties: KIM SENG COMPANY, Plaintiff, v. J & A IMPORTERS, INC., et al., Defendants.

810 F.Supp.2d 1046

KIM SENG COMPANY, Plaintiff,

v.J & A IMPORTERS, INC., et al., Defendants.

Case No. CV10–742 CAS (MANx).

United States District Court,C.D. California,Western Division.

Aug. 30, 2011.

Ernest E. Price, Arnold E. Sklar, Ropers Majeski Kohn and Bentley, Los Angeles, CA, for Plaintiff.

Daniel Miles Cislo, Mark D. Nielsen, Peter S. Veregge, Cislo and Thomas LLP, Santa Monica, CA, for Defendants.

ORDER GRANTING DEFENDANT J & A'S MOTION FOR SUMMARY JUDGMENT AND DENYING PLAINTIFF KIM SENG'S MOTION FOR PARTIAL SUMMARY JUDGMENT

CHRISTINA A. SNYDER, District Judge.I. INTRODUCTION

On February 2, 2010, plaintiff Kim Seng Company (“Kim Seng”) filed a complaint against defendants J & A Importers, Inc. (“J & A”) and Does 1–50. The complaint alleges trade dress infringement, 15 U.S.C. § 1125(a), copyright infringement, 17 U.S.C. § 501(a), unfair competition pursuant to Cal. Bus. & Prof.Code §§ 17200 et seq. , and common law unfair competition. ¹

On August 1, 2011, Kim Seng filed a motion for partial summary judgment as to copyright infringement and J & A filed a cross motion for summary judgment as to all claims, or in the alternative, for partial summary adjudication.² After carefully considering the arguments set forth by both parties, the Court finds and concludes as follows.

II. BACKGROUND

Kim Seng and J & A are competing Chinese–Vietnamese food supply companies. The gravamen of their dispute centers on the intellectual property rights as they relate to their respective rice stick food packages. Compl. ¶ 13. Each package depicts a photograph of a bowl filled with rice sticks, topped by foodstuffs such as egg rolls, grilled meat, and assorted garnishes. See Pl. Mot. at 1. Both packages have a yellow background with red trimming and contain various Chinese, Vietnamese, and English words. Id. The Kim Seng Package advertises “Bun Cha Gio Thit Nuong” and the J & A Package advertises “Bun Thit Nuong Cha Gio,” which, according to the parties, roughly translates into “rice stick, egg roll, grilled meat.” Def. Mot. at 18; Def. Reply at 7.

Kim Seng asserts that it began using its packaging (“Kim Seng Package”) in 2002. Plaintiff's Statement of Uncontroverted Facts (“Pl. SUF”) ¶ 5. J & A began using its packaging (“J & A Package”) in 2009. Defendant's Statement of Genuine Issues (“DSGI”) ¶ 7. Shortly thereafter, Kim Seng sent a cease and desist letter to J & A, alleging that the J & A Package infringed on both the trade dress and copyrights contained in the Kim Seng Package. Plaintiff's Statement of Genuine Issues (“PSGI”) ¶ 11. Kim Seng copyrighted its package design effective March 10, 2003, with a “first publication” date of January 5, 1998. DSGI ¶ 31; Reg. No. VA–1–190–640; Decl. of Daniel Cislo in Support of J & A's Motion (“Cislo Decl.”) Exh. 9. On January 12, 2010, Kim Seng filed a “Form CA” to amend its registration by listing the first publication date as July 3, 2002, and by adding “3–Dimensional sculpture” in lieu of “photograph” as the nature of authorship. Cislo Decl. Exh. 7; Bates Nos. KS 000014–20. On September 1, 2010, the U.S. Copyright Office rejected the supplementary registration because Kim Seng's copyright claim on the 3–dimensional sculpture would “fundamentally change the original registration” of a 2–dimensional packaging design. Cislo Decl. Exh. 22.

Kim Seng contends that it owns the copyrights to both the underlying bowl-of-food “sculpture” and the photograph depicting the bowl. Pl. Mot. at 9. Kim Seng asserts that the underlying sculpture was “created” by Yiyong Tsai, a Kim Seng employee, during the course of her employment. Id. at 7. Specifically, Kim Seng claims that Tsai dictated the layout and details of the bowl of food to a third party, Yen Khuu, who physically purchased the bowl and food and constructed it. Id. Khuu is employed by Fortune Asian, the company that commissioned independent contractor Amy Peng to photograph the bowl of food ³ Id. at 3–4. According to Kim Seng, Peng purportedly “intended to convey ownership” of her copyright in the photograph by “delivering the photographic negative” to Fortune Asian. Id. at 8. Kim Seng notes that “[e]fforts to locate and communicate with [Amy Peng] have been fruitless,” but that nevertheless her delivery of the negative constituted an effective conveyance. Id. at 8 n. 1. Subsequently, Fortune Asian allegedly “intended to assign all right to Kim Seng and executed a written confirmation of assignment effective in ... 2002.” Id. at 10.

Although “J & A ultimately disputes the origin of the Kim Seng Package,” for the purposes of Kim Seng's motion J & A accepts the above facts. Def. Mot. at 6 n. 1. J & A separately notes that Kim Seng's copyright registration for the Kim Seng Package was issued on March 10, 2003, more than five years after January 5, 1998, the date listed on the registration of first publication. ⁴ Furthermore, J & A observes that Kim Seng's “Form CA” claims that “Kim Seng obtained ownership of the copyright in the photograph by assignment.” Id. at 7.

III. LEGAL STANDARD

Summary judgment is appropriate where “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The moving party has the initial burden of identifying relevant portions of the record that demonstrate the absence of a fact or facts necessary for one or more essential elements of each cause of action upon which the moving party seeks judgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

If the moving party meets its initial burden, the opposing party must then set out specific facts showing a genuine issue for trial in order to defeat the motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); see also Fed.R.Civ.P. 56(c), (e). The nonmoving party must not simply rely on the pleadings and must do more than make “conclusory allegations [in] an affidavit.” Lujan v. Nat'l Wildlife Fed'n, 497 U.S. 871, 888, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990); see also Celotex, 477 U.S. at 324, 106 S.Ct. 2548. Summary judgment must be granted for the moving party if the nonmoving party “fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.” Id. at 322, 106 S.Ct. 2548; see also Abromson v. Am. Pac. Corp., 114 F.3d 898, 902 (9th Cir.1997).

In light of the facts presented by the nonmoving party, along with any undisputed facts, the Court must decide whether the moving party is entitled to judgment as a matter of law. See T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 631 & n. 3 (9th Cir.1987). When deciding a motion for summary judgment, “the inferences to be drawn from the underlying facts ... must be viewed in the light most favorable to the party opposing the motion.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citation omitted); Valley Nat'l Bank of Ariz. v. A.E. Rouse & Co., 121 F.3d 1332, 1335 (9th Cir.1997). Summary judgment for the moving party is proper when a rational trier of fact would not be able to find for the nonmoving party on the claims at issue. See Matsushita, 475 U.S. at 587, 106 S.Ct. 1348.

IV. DISCUSSION

As an initial matter, the Court finds that Kim Seng's copyright registration does not give rise to prima facie evidence of copyright validity. Under 17 U.S.C. § 410(c), a copyright holder is entitled to prima facie evidence of the validity of the copyright if it had been registered within five years after first publication of the work. Id. Kim Seng's copyright registration indicates that it was issued March 10, 2003, and lists January 5, 1998, as the first date of publication. Cislo Decl. Exh. 9; Reg. No. VA–1–190–640. Although Kim Seng has filed a Form CA to amend the first publication date to July 2002 and to add “3–Dimensional sculpture” to the registration's ambit, the U.S. Copyright Office rejected the proposed amendments on September 1, 2010, for the reasons set forth above. As of August 23, 2011, Kim Seng's copyright maintains January 5, 1998 as the date of first publication. Accordingly, Kim Seng's copyright registration presently does not constitute prima facie evidence of copyright validity, and its evidentiary weight is left to the Court's discretion. 17 U.S.C. § 410(c).

1. Copyright Claims

In order to establish copyright infringement, a plaintiff must prove two elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

Kim Seng claims to own copyrights in both the bowl-of food sculpture and the photograph of the food.⁵ Pl. Mot. at 8. As to the photograph specifically, Kim Seng asserts that it is either a derivative work of its underlying sculpture pursuant to 17 U.S.C. § 103, or alternatively, that Amy Peng assigned her interest in the photograph to Fortune Asian, which then assigned that interest to Kim Seng. Id. J & A contends that the food sculpture is not copyrightable, that the photograph is not a derivative work, and that Kim Seng cannot demonstrate ownership of the photograph. Opp. at 9, 12, 14. Each copyright claim is addressed below.

A. The Bowl of Food Sculpture ⁶

Kim Seng contends that it owns the underlying copyright to the bowl of food because its employee, Yiyong Tsai, directed Fortune Asian employee Yen Khuu to create it. Mot. at 3–4. Assuming this to be true, the bowl of food must still meet the requirements for a “valid” copyright. A sculptural work is copyrightable if it is a work of original authorship fixed in a tangible medium of expression, demonstrates sufficient creativity, and contains artistic aspects that are separable from its utilitarian functions. 17 U.S.C. § 101; Feist, 499...