Olem Shoe Corp. v. Washington Shoe Co.

• Decision Date: 01 December 2011
• Docket Number: CASE NO. 09-23494-CIV-HUCK/BANDSTRA
• Parties: OLEM SHOE CORP., Plaintiff / Counter-Defendant, v. WASHINGTON SHOE CO., Defendant / Counter-Plaintiff.
• Court: U.S. District Court — Southern District of Florida

OLEM SHOE CORP., Plaintiff / Counter-Defendant,

v.WASHINGTON SHOE CO., Defendant / Counter-Plaintiff.

CASE NO. 09-23494-CIV-HUCK/BANDSTRA

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

Dated: December 1, 2011

ORDER ON CROSS-MOTIONS FOR SUMMARY JUDGMENT

This matter is before the Court on the parties' cross-motions for summary judgment. Defendant/Counter-Plaintiff Washington Shoe Co. ("Washington Shoe") seeks summary judgment in its favor for (1) copyright infringement of three copyrights known as "Zebra Supreme" (Registration No. VAu001007893, VA 1-432-334), "Rose Zebra Supreme" (Registration No. VAu988-278)¹ and "Ditsy Dots" (Registration No. VAu756-950, VA 1-420-043); and (2) trade dress infringement for the unregistered trade dresses for Zebra Supreme and Ditsy Dots. D.E. #250. Plaintiff/Counter-Defendant Olem Shoe Corp. ("Olem Shoe") seeks summary judgment in its favor on the entirety of the claims and counterclaims at issue in this action including (1) non-infringement, inter alia, of the aforementioned copyrights Zebra Supreme, Rose Zebra Supreme and Ditsy Dots; and (2) non-infringement of the trade dresses for Zebra Supreme and Ditsy Dots. D.E. #254. Since the parties' cross-motions for summary judgment present significantly overlapping issues, the Court will analyze the motions in tandem and decide whether, as to each argument raised, either party is entitled to judgment as a matter of law. For the reasons discussed below, the Court takes the following actions herein:

(1) GRANTS summary judgment in favor of Washington Shoe and DENIES summary judgment with respect to Olem Shoe on the copyright infringementclaims addressed herein, except with respect to the new invalidity issues asserted against the Rose Zebra Supreme copyright in Olem Shoe's affirmative defenses filed on November 11, 2011 [D.E. #385];

(2) DENIES summary judgment with respect to Washington Shoe and GRANTS summary judgment in favor of Olem Shoe on the trade dress infringement and false designation of origin claims addressed herein;

(3) DENIES summary judgment with respect to Washington Shoe and GRANTS summary judgment in favor of Olem Shoe on the "willful" copyright and trade dress infringement claims addressed herein; and

(4) DENIES summary judgment with respect to Washington Shoe and GRANTS summary judgment in favor of Olem Shoe on the unfair competition claims addressed herein.

I. Background²

Olem Shoe and Washington Shoe both sell women's boots. This case is about two of Washington Shoe's boots called "Ditsy Dots" and "Zebra Supreme"³ and whether Olem Shoe is infringing upon the patterned designs on the face of such boots with its own boots. As the names suggest, Ditsy Dots boots are covered in a polka-dotted design and Zebra Supreme boots have a design resembling a zebra's black and white-striped skin. Below are illustrative and undisputed photographs of Washington Shoe's Ditsy Dots boots against Olem Shoe's Dots boots (D.E. #354, Exhs. 5 and 11) and Washington Shoe's Zebra Supreme boots against Olem Shoe's Zebra boots (D.E. #354, Exhs. 4 and 16):

On October 29, 2009, Washington Shoe's counsel sent Olem Shoe a cease and desist letter indicating that four Olem Shoe boot designs infringe upon Washington Shoe's copyrighted Ditsy Dots design and violate its trade dress rights. The letter includes small pictures of each of the allegedly infringing boots. It does not include any identifying information for Washington Shoe's Ditsy Dots copyright registration or a sample of the allegedly infringing work. D.E. #250-5, Exh. #9. After a response from Olem Shoe's counsel seeking more information, Washington Shoe's counsel sent a follow up letter on November 9, 2009 to Olem Shoe's counsel providing the Ditsy Dots copyright registration on Form VA. The form indicates that the "Ditsy Dots" copyright was registered to Washington Shoe under registration number VAu-756-950 with an effective date of August 9, 2007. The copyright was for "[a]rtwork designs applied to useful articles." Id. A copy of the work deposited with the United States Copyright Office was not provided. On November 16, 2009, Olem Shoe filed the instant action for a judgment declaring, among other things, that Washington Shoe's Ditsy Dots copyright is invalid, not infringed by Olem Shoe or not enforceable and that its trade dress rights are not enforceable or unprotectable. D.E. #1.

On January 7, 2010, Washington Shoe's counsel sent Olem Shoe a second cease and desist letter alleging that Olem Shoe was infringing the copyright and trade dress for another design: "ZEBRA SUPREME BOOTS." This letter includes one small picture of the allegedly infringing boot. It does not include any identifying information for Washington Shoe's Zebra Supreme copyright registration or a sample of the allegedly infringing work. D.E. #250-5, Exh. #9. One day later, on January 8, 2010, Washington Shoe filed an application to register a work entitled "Zebra Supreme - Olem," and this matured into a Certificate of Registration effective January 8, 2010. On January 15, 2010, Washington Shoe counterclaimed in this matter forcopyright and trade dress infringement regarding both the Ditsy Dots and Zebra Supreme designs as well as unfair competition with regard to both designs. D.E. #12. As an exhibit, Washington Shoe included a picture of the Zebra Supreme design and indicated that the copyright registration was pending in the copyright office. D.E. #13. In its amended counterclaim dated February 11, 2010, Washington Shoe included the copyright registration for "Zebra Supreme - Olem" on Form VA. D.E. #18. The form indicates that "Zebra Supreme - Olem" was registered to Washington Shoe under registration number VAu-1-007-893 with an effective date of January 8, 2010. The copyright was for "2d artwork." Id.

Thereafter, Olem Shoe filed a motion to dismiss Washington Shoe's counterclaims. Olem Shoe had asserted that Washington Shoe's copyrights protect only the two-dimensional drawings filed the copyright office, not the three-dimensional boots. The Court found on April 2, 2010 that while the utilitarian functions of Washington Shoe's boots are not protected, the designs on the face of the boots, to the extent they have aesthetic value, are eligible for copyright protection. The Court also found that Washington Shoe had failed to sufficiently allege secondary meaning, a necessary element of its trade dress infringement claims, and granted Washington Shoe leave to amend, which it took. D.E. #47 and #54.

On March 11, 2010, Washington Shoe filed an initial motion for summary judgment limited only to its copyright infringement claims. D.E. #29. In response to this motion, Olem Shoe disputed the validity of Washington Shoe's copyright registrations. D.E. #56. Olem Shoe alleged that Washington Shoe submitted inaccurate information on these registrations thereby barring Washington Shoe's claim for copyright infringement. See 17 U.S.C. § 411(a) & (b)(1) (indicating that registration is a pre-requisite for a claim for copyright infringement). On May 1, 2010, Olem Shoe requested leave of this Court to submit questions to the Register of Copyrights (the "Register") for its advisory opinion regarding Washington Shoe's alleged misrepresentations pursuant to the statutory mechanism set forth in 17 U.S.C. § 411(b)(2). The Court agreed to submit questions to the Register on September 3, 2010. D.E. #167 and #168.⁴ The allegedly inaccurate information that the Court found to be the proper subject of a request to the Registerconcerned the registrations' characterization of the Ditsy Dots and Zebra Supreme designs as unpublished and its characterization of the Zebra Supreme design as non-derivative.

On October 14, 2010, the Court received the Register's advisory opinion with respect to its questions. D.E. #209. The Register indicated that if it had known of the allegedly inaccurate information on the Ditsy Dots' application, it would have nonetheless registered this work. With regard to the Zebra Supreme design, the Register stated that had it confirmed the alleged pre-registration retail sales of Zebra Supreme boots, it would have refused registration of that work as "unpublished" because retail sales generally constitute publication. However, pursuant to its general practices, the Register indicated that it would have corresponded with Washington Shoe and that "[c]orrection of such inaccurate information would then allow for registration of the work as a published work." The Register also stated that had it known that Zebra Supreme was created by altering a previously-registered Washington Shoe work called Rose Zebra Supreme (Registration number VAu 988-278), as alleged, it would have refused registration of that work as "non-derivative." While the Register indicated that Washington Shoe would have a similar opportunity for amendment on this issue, it indicated that if the amendment included only certain evidence, it would have nonetheless refused registration of a "derivative" Zebra Supreme work.

After receiving the Register's advisory opinion, the parties agreed to confer and seek the Register's further advice and the Court stayed the case. D.E. #214. On November 10, 2010, Washington Shoe proceeded to file corrective supplementary copyright registrations for both the Ditsy Dots and Zebra Supreme designs.⁵ D.E. #218. The Register subsequently granted the supplementary registrations for both designs. D.E. #224. The supplementary registration for Ditsy Dots on Form CA indicates that the "Ditsy Dots" copyright was registered to Washington Shoe under registration number VAu-756-950 in 2007. The supplementary registration number is VA 1-420-043 with an effective date of supplementary registration of November 22, 2010. A note indicates that due to online sales in 2006, the status of Ditsy Dots' registration is changed to "published." D.E. #224-1. The supplementary registration for Zebra Supreme-Olem on Form CA indicates that the...