Parfums Givenchy v. C & C BEAUTY SALES

• Citation: 832 F. Supp. 1378
• Decision Date: 01 September 1993
• Docket Number: No. CV 92-7455 MRP.,CV 92-7455 MRP.
• Court: United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
• Parties: PARFUMS GIVENCHY, INC., Plaintiff, v. C & C BEAUTY SALES, INC., Defendant.

832 F. Supp. 1378

PARFUMS GIVENCHY, INC., Plaintiff, v. C & C BEAUTY SALES, INC., Defendant.

No. CV 92-7455 MRP.

United States District Court, C.D. California.

September 1, 1993.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Ronald L. Olson, Lawrence C. Barth, Munger, Tolles & Olson, Los Angeles, CA, Peter J. Nickles, Curtis A. Bradley, Caroline M. Brown, Covington & Burling, Washington, DC, for plaintiff.

Greer, Homer & Bonner, P.A., R. Lawrence Bonner, Blaxberg, Grayson & Singer, Moises T. Grayson, Miami, FL, McMurry, Russ, August, Kabat & de Recat, Susan L. Harrison, Prescilla Dugard, Los Angeles, CA, for defendant.

OPINION

PFAELZER, District Judge.

Plaintiff Parfums Givenchy, Inc. ("Givenchy USA") brought this copyright infringement action against defendant C & C Beauty Sales, Inc. ("C & C Beauty") pursuant to Section 602(a) of the Copyright Act of 1976, which prohibits the "importation into the United States, without the authority of the owner of copyright ... of copies or phonorecords of a work that have been acquired outside the United States." 17 U.S.C. § 602(a). Givenchy USA filed a motion for summary judgment on March 3, 1993. The Court took the motion under submission on April 5, 1993, pursuant to the stipulation of counsel. On June 22, 1993, Givenchy USA filed a motion for statutory damages; the Court took that motion under submission on August 25, 1993.

The Court now grants Givenchy USA's motion for summary judgment except insofar as it seeks reimbursement of attorney's fees. The court denies Givenchy USA's motion for statutory damages.

FACTS

Givenchy USA, a New York corporation, is the exclusive authorized distributor of Givenchy perfume products in the United States. The products are manufactured in France by Givenchy USA's parent company, Parfums Givenchy, S.A. ("Givenchy France"). Givenchy USA is the only party authorized to import these products into the United States for consumption in this country. One of the products manufactured by Givenchy France and distributed in the United States by Givenchy USA is a perfume marketed under the name "Amarige." Each bottle of Amarige perfume is packaged in a box, the outside of which displays a two-dimensional artistic design (the "Amarige Box Design"). Employees of Givenchy France created this design in 1991.

On February 27, 1992, Givenchy France sold the United States rights to the copyright in the Amarige Box Design to Givenchy USA. Givenchy USA recorded the copyright in the design with the United States Copyright Office, which issued a registration certificate to Givenchy USA effective March 24, 1992.

During 1992, Givenchy spent over five million dollars advertising Amarige perfume throughout the United States and promoting its image as a high-quality, high-prestige luxury item. The Amarige Box Design is prominently featured in the advertising and is an important part of the overall Amarige perfume product.

Defendant C & C Beauty is a Florida corporation with its principal place of business in Miami, Florida. It is a self-described importer of "gray market" perfume products.¹ Without Givenchy USA's authorization, C & C Beauty has been importing into this country and purchasing from third-party, gray-market importers substantial quantities of Amarige perfume products (including the Amarige Box Design), and then distributing them to retail stores. According to Givenchy USA, C & C Beauty's unauthorized importation and distribution of Amarige perfume in the United States threatens to erode Givenchy USA's exclusive market and undermine the image of the Amarige perfume product as a high-quality, high-prestige luxury item.

PROCEDURAL HISTORY

Givenchy USA's present suit against C & C Beauty is closely connected with an earlier suit brought by Givenchy USA in this Court against Drug Emporium, Inc., one of C & C Beauty's largest customers. In that case, Givenchy USA claimed that Drug Emporium had infringed Givenchy USA's exclusive right to distribute the copyrighted design that appears on the packaging of Amarige perfume, in violation of Section 602(a) of the Copyright Act.

On September 17, 1992, this Court preliminarily enjoined Drug Emporium from continued distribution of the Amarige Box Design. On November 23, 1992, on Givenchy USA's motion for summary judgment, this Court entered a permanent injunction against Drug Emporium and awarded Givenchy USA its reasonable attorney's fees² and costs. Parfums Givenchy, Inc. v. Drug Emporium, Inc., No. CV 92-4206 MRP, 1992 WL 532166 (C.D.Cal. Nov. 23, 1992). The Court held, inter alia, that the "first sale" doctrine did not shield Drug Emporium from liability under Section 602(a) of the Copyright Act.

The same day that this Court entered a preliminary injunction against Drug Emporium, C & C Beauty filed suit against Givenchy USA in the United States District Court for the Southern District of Florida. C & C Beauty sought a declaratory judgment that its importation and distribution of the Amarige Box Design did not violate Section 602(a) of the Copyright Act, by virtue of the "first sale" doctrine. Givenchy USA then moved to transfer that action to this Court.

On December 18, 1992, Givenchy USA filed the present action. On January 20, 1993, C & C Beauty moved to dismiss this action, or, in the alternative, to transfer it to the United States District Court for the Southern District of Florida. C & C Beauty based its motion on the pendency of the declaratory judgment action it had filed in Florida.

On January 28, 1993, the Florida court issued an order transferring C & C Beauty's declaratory judgment action to this District. See C & C Beauty Sales, Inc. v. Parfums Givenchy, Inc., No. 92-2157 CIV-MARCUS (S.D.Fla. Jan. 27, 1993). C & C Beauty subsequently withdrew its motion to dismiss or transfer, and has filed an answer to Givenchy USA's complaint. Givenchy USA now moves for summary judgment.

DISCUSSION

Summary judgment is proper 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 party opposing a properly supported motion for summary judgment may not rest upon mere allegation or denials of his pleading, but must set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 2514, 91 L.Ed.2d 202 (1986); see also Fed.R.Civ.P. 56(e). In determining whether a triable issue exists, the court "`must view the evidence and inferences therefrom in the light most favorable to the party opposing the motion.'" Valandingham v. Bojorquez, 866 F.2d 1135, 1137 (9th Cir.1989) (quoting Jewel Cos. v. Pay Less Drug Stores Northwest, 741 F.2d 1555, 1559 (9th Cir.1984)).

Givenchy USA's claim arises under Section 602(a) of the Copyright Act of 1976, which provides:

Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.

17 U.S.C. § 602(a).

The legislative history of this section makes clear that, in enacting it, Congress intended to protect copyright owners against the unauthorized importation of copies acquired outside the United States even when such copies are lawfully made:

Section 602 ... deals with two separate situations: importation of "piratical" articles (that is, copies or phonorecords made without any authorization of the copyright owner), and unauthorized importation of copies or phonorecords that were lawfully made.

H.R.Rep. No. 1476, 94th Cong., 2d Sess. 169 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5785 (emphasis added).

The history further states that "the mere act of importation ... constitutes an act of infringement." Id. at 170. This is confirmed by Section 501(a) of the Act, which states that "anyone ... who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright...." 17 U.S.C. § 501(a).

By its terms, Section 602(a) sets forth three requirements for a copyright claim: (1) plaintiff must be the "owner of copyright" in the work in question; (2) copies of the work must have been imported into the United States "without the authority of the owner of copyright"; and (3) the imported copies must have been "acquired outside the United States." Each of these requirements is met here. The certificate of copyright registration in the Amarige Box Design is prima facie evidence of the validity of the copyright and of Givenchy USA's ownership thereof. See 17 U.S.C. § 410(c); Apple Computer, Inc. v. Formula Int'l, Inc., 725 F.2d 521, 523 (9th Cir.1984). Givenchy USA's evidence, as well as C & C Beauty's pleadings and affidavits, establish that C & C Beauty has been importing and distributing Amarige perfume, including the Box Design, without Givenchy USA's consent, and that the perfume was originally acquired abroad. Thus, Givenchy USA's claim appears to fall squarely within the protection of Section 602(a).

C & C Beauty makes three arguments in its attempt to defeat summary judgment. First, it argues that Givenchy USA has failed to establish that it has standing to bring a claim under Section 602(a). Second, C & C Beauty argues that the "first sale" doctrine, codified in Section 109(a) of the Copyright Act, exempts it from liability under Section 602(a). Finally, it argues that the Amarige Box Design is not entitled to copyright protection because it is inseparable from the utilitarian article to which it is attached. Each of these arguments lacks merit, and Givenchy USA is entitled to summary judgment.

I. Standing

At the outset, C & C Beauty attacks Givenchy USA's standing to bring its claim under Section 602(a). C & C Beauty points out that Givenchy USA's evidence concerning the date of the alleged...