Norma Ribbon & Trimming, Inc. v. Little

• Decision Date: 27 April 1995
• Docket Number: No. 94-60389,94-60389
• Citation: 51 F.3d 45,34 U.S.P.Q.2d 1603
• Parties: 1995 Copr.L.Dec. P 27,382, 34 U.S.P.Q.2d 1603 NORMA RIBBON & TRIMMING, INC., Plaintiff-Counter Defendant-Appellee, v. John D. LITTLE, et al., Defendants, John D. Little and Lorianne Little, Defendants-Counter Plaintiffs-Appellants.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 45

51 F.3d 45

1995 Copr.L.Dec. P 27,382, 34 U.S.P.Q.2d 1603

NORMA RIBBON & TRIMMING, INC., Plaintiff-Counter Defendant-Appellee, v. John D. LITTLE, et al., Defendants John D. Little and Lorianne Little, Defendants-Counter Plaintiffs-Appellants.

No. 94-60389.

United States Court of Appeals Fifth Circuit.

April 27, 1995.

M. Lloyd Seljos, McAllen, TX, for appellants.

J. Arnold Aguilar, Lisa M. Mount, Willette & Aguilar, Brownsville, TX, for appellee.

Appeal from the United States District Court for the Southern District of Texas.

Before VAN GRAAFEILAND, ^* JOLLY and WIENER, Circuit Judges.

VAN GRAAFEILAND, Circuit Judge:

This is an appeal from a summary judgment in a copyright infringement action. The United States District Court for the Southern District of Texas (Vela, J.), concluding that counter-plaintiffs John D. Little and Lorianne Little could not establish ownership of valid copyrights, dismissed their infringement action against counter-defendant Norma Ribbon & Trimming, Inc. ("Norma Ribbon"). For the reasons that follow, we affirm.

At issue herein are asserted copyrights on ribbon flowers, artificial flowers made of twisted ribbon that may be attached as decoration to clothing and accessories. According to the uncontradicted testimony of the Littles' expert witness, ribbon flowers have been in existence for many years, possibly as early as the 18th century. Norma Ribbon has made and marketed them since the late 1940s. The Littles began manufacturing ribbon flowers in 1983.

Prior to 1984, ribbon flowers were manufactured by hand, by twisting a piece of ribbon into a floral design and sewing it together. In 1984, the spouse of an employee of the Littles developed a machine and a heat-seal process that reduced substantially the time required to produce each flower. This invention also permitted greater consistency in the manufacturing process. Flowers made using this invention were of consistently high quality, whereas flowers made by hand often were irregular and less attractive.

In April of 1985, the Littles entered into an agreement to produce ribbon flowers for Norma Ribbon. Meanwhile, the Littles applied for federal copyright registration and, effective May 1, 1986, were issued certificates of registration for the twelve designs which are the subject of this litigation. The Littles advised Norma Ribbon that these flowers were copyrighted and Norma Ribbon acknowledged in writing the copyrights' existence. For several years, Norma Ribbon provided the Littles with raw materials for the flowers, and the Littles produced the ribbon flowers under the agreement. However, in late 1987, Norma Ribbon rescinded the agreement without notice and began to import identical ribbon flowers from suppliers in Mexico. Norma Ribbon later established its own manufacturing facility in Mexico.

Early in 1988, John Little wrote to Norma Ribbon advising the company that it could no longer import or distribute the ribbon flowers on which the Littles held copyrights. Nevertheless, Norma Ribbon continued to do so. Therefore, in 1989, the Littles prompted customs agents to seize a shipment of the flowers as they crossed the border from Mexico into the United States by claiming that Norma Ribbon was importing the flowers in violation of the Littles' copyrights.

On October 23, 1989, Norma Ribbon brought suit against the Littles, alleging copyright invalidity and requesting injunctive relief against further seizures and the bringing of a copyright infringement action. The Littles counter-claimed for copyright infringement. On January 25, 1990, the district court found that the copyrights were invalid because the ribbon flowers lacked originality and issued a preliminary injunction in favor of Norma Ribbon. The injunction prohibited the Littles from taking any action to cause the Customs Service to seize future shipments of the flowers and also from instituting any infringement action against Norma Ribbon. In an unpublished decision, this Court upheld the district court's preliminary injunction against seizures of shipments, but remanded the case for trial on the merits of the copyright infringement claim. Norma Ribbon & Trimming, Inc. v. Little, 935 F.2d 1291 (5th Cir.1991) (table). On April 25, 1994, the district court granted summary judgment in favor of Norma Ribbon, holding as a matter of law that the ribbon flowers lacked the requisite originality for copyright protection. The Littles now appeal.

We review the district court's grant of summary judgment de novo. Makedwde Publishing Co. v. Johnson, 37 F.3d 180, 181 (5th Cir.1994). Summary judgment is appropriate if "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). A copyright infringement action requires the plaintiff to prove ownership of a valid copyright and copying by the defendant. Lakedreams v. Taylor, 932 F.2d 1103, 1107 (5th Cir.1991); Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806, 810 (5th Cir.1989); Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 387 (5th Cir.1984). Ownership of a valid copyright is established by proving the originality and copyrightability of the material and compliance with the statutory formalities. Allied Mktg., 878 F.2d at 810-11; Apple Barrel, 730 F.2d at 387. Copying generally is established by proving that the defendant had access to the copyrighted material and that there is a substantial similarity between the two works. Allied Mktg., 878 F.2d at 810-11; Apple Barrel, 730 F.2d at 387 n. 3.

The Littles obtained copyright certificates of registration, which "constitute prima facie evidence of the validity of the copyright[s]." 17 U.S.C. Sec. 410(c). However, certificates create only a rebuttable presumption that the copyrights are valid. See Lakedreams, 932 F.2d at 1108 n. 10 (citing Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980)). Here, Norma Ribbon has rebutted that presumption.

In the first place, the ribbon flowers which are the subject of this action are not original. "Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 1287, 113 L.Ed.2d 358 (1991) (citing 1 M. Nimmer & D. Nimmer, Copyright Secs. 2.01[A], [B] (1990)). Although it is undisputed that ribbon flowers were in existence long before the Littles entered the ribbon flower business, "a work may be protected by copyright even though it is based on ... something already in the public...