Yankee Candle Co. v. New England Candle Co.

Decision Date21 July 1998
Docket NumberNo. Civ.A. 96-30165-FHF.,Civ.A. 96-30165-FHF.
PartiesTHE YANKEE CANDLE COMPANY, INC., Plaintiff, v. NEW ENGLAND CANDLE COMPANY, INC., Henry Komosa, and Kristine Komosa, Defendants.
CourtU.S. District Court — District of Massachusetts

Mary R. Bonzagni, Law Offices of Donald S. Holland, Longmeadow, MA, Donald S. Holland, Holland & Bonzagni, P.C., Longmeadow, MA, for Plaintiff.

Evan T. Lawson, J. Mark Dickison, Lawson & Weitzen, Boston, MA, Karen G. Jackson, Northampton, MA, for Defendants.

MEMORANDUM AND ORDER

FREEDMAN, Senior District Judge.

I. INTRODUCTION

This dispute lit up when the plaintiff, The Yankee Candle Company, Inc. ("Yankee"), noticed that the defendants, New England Candle Company, Inc., and its owners Henry and Kristine Komosa (hereinafter collectively referred to as "New England"), had opened a retail candle store that possessed strikingly similar characteristics to its own stores. Yankee turned directly to this Court with a seven-count complaint alleging federal and state trademark infringement, federal copyright infringement, and state deceptive trade practices against New England.

After extensive hearings, the Court granted Yankee's motion for a preliminary injunction on the copyright infringement claim. Despite some initial difficulty, New England complied with the terms of the Court's order by making structural changes to its store. Seeking a permanent injunction, Yankee now moves for summary judgment only on the copyright claim. In response, New England seeks summary judgment on all claims and a dissolution of the preliminary injunction.

II. FACTS

The facts remain essentially as set out in the Court's June 26, 1997 Memorandum and Order, with one interesting twist. As a result, the Court need not wax eloquent about the complete chronicle of this litigation, but instead will summarize those facts particularly pertinent to the present polemic.

Founded in bucolic western Massachusetts a quarter century ago, Yankee manufactures and sells candles and related products in its numerous retail stores throughout the northeastern and midwestern United States. During a recent expansion of stores situated in shopping malls, Yankee engaged architect John Wood Kuhn ("Kuhn") to design an archetypal colonial candle shop whose look Yankee could replicate. In crafting the Natick Mall store that opened in October 1994 in Natick, Massachusetts, Kuhn combined several common design elements, including dark, wooden display cases lining the interior walls, multi-paned glass windows framed by dark wood on the exterior storefront, and a brass letter sign placed above French doors in a recessed entrance. Yankee and Kuhn patterned its subsequent shopping mall stores after the Natick store's composition of elements.

The shop at the heart of this dispute, the Holyoke Mall store in Holyoke, Massachusetts, opened in October 1995. Prior to the opening, Yankee acquired ownership interest in the architectural blueprints for the Holyoke store from Kuhn and his architectural firm. On September 4, 1996, Yankee registered those blueprints with the United States Copyright Office as a "Technical drawing." Well after the commencement of this litigation, on February 2, 1998, Yankee also registered the "Yankee Candle at Holyoke Mall" store with the U.S. Copyright Office as an "Architectural work," describing it as the "Design of a Building as Embodied in Architectural Plans."

Around the time Yankee debuted its Holyoke store, the defendants Henry and Kristine Komosa hatched a plan to compete with Yankee in the retail candle business. In due time, the Komosas incorporated the New England Candle Company, Inc. and planned to open a colonial style candle store at the Enfield Square Mall in Enfield, Connecticut. The New England store opened on September 4, 1996, looking remarkably similar to its Yankee competitor just north of the Massachusetts border in Holyoke. In fact, the New England store employed many of the same design elements the Yankee's Holyoke store used.

None too happy with these resemblances, Yankee filed suit on September 9, 1996, seeking to enjoin New England from copying the look of its store. The Court found the plaintiff likely to succeed on the merits of its copyright claim, but not its trademark infringement claims. Accordingly, the Court issued an injunction ordering New England to make various structural changes to its Enfield Mall store and to refrain from constructing another retail candle shop that looked similar to Yankee's Holyoke store. New England complied with the injunction, but now rejects the merits of Yankee's copyright and trademark allegations and seeks summary judgment.

III. STANDARD OF REVIEW

The essential purpose of summary judgment is "to pierce the boilerplate of the pleadings" and appraise the proof to determine whether a trial is necessary. See Wynne v. Tufts Univ. Sch. of Med., 976 F.2d 791, 794 (1st Cir.1992), cert. denied, 507 U.S. 1030, 113 S.Ct. 1845, 123 L.Ed.2d 470 (1993). When summary judgment is at stake, the Court must scrutinize the record in the light most favorable to the nonmoving party, "indulging all reasonable inferences in that party's favor," Griggs-Ryan v. Smith, 904 F.2d 112, 115 (1st Cir.1990), yet disregarding unsupported allegations, unreasonable inferences, and conclusory speculation. See Smith v. F.W. Morse & Co., 76 F.3d 413, 428 (1st Cir.1996); Medina-Munoz v. R.J. Reynolds Tobacco Co., 896 F.2d 5, 8 (1st Cir.1990). If no genuine issue of material fact percolates through the record and the movant is entitled to judgment as a matter of law, then summary judgment is proper because a trial would serve no useful purpose. See Fed. R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Wynne, 976 F.2d at 794.

IV. DISCUSSION

Yankee's motion for partial summary judgment seeks brevis disposition only on count seven of its complaint, an alleged violation of the federal Copyright Act of 1976. See 17 U.S.C. § 101 et seq. New England seeks summary judgment on all counts of the complaint. The Court will consider the copyright claim first as it presents a novel question of law.

A. Copyright Infringement

In Count Seven of its Second Amended Complaint, Yankee alleges that New England infringed on its registered copyrights to both the architectural blueprints of the Holyoke store and the architectural work that the store itself represents. To sustain a claim of copyright infringement, Yankee has the burden of demonstrating that it owns a valid copyright in the architectural blueprints and architectural work alleged to have been copied, and that New England copied constituent elements of the blueprints that are original. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); Grubb v. KMS Patriots, L.P., 88 F.3d 1, 3 (1st Cir.1996); Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir.1988). In this case, New England contests Yankee's ownership of a valid copyright and denies that it copied Yankee's designs. New England argues that the Holyoke store does not merit copyright protection as an architectural work and that the plaintiff has not alleged or offered evidence of infringement of its architectural plans. Yankee responds that its retail shopping mall store qualifies for copyright protection and that the substantial similarities between the stores demonstrate the copying of its protected works.

1. Valid Copyright Ownership

The Copyright Act grants a copyright owner exclusive rights in a copyrighted work to authorize reproduction of the work, preparation of derivative works, and public display of the work. 17 U.S.C. §§ 106-20. To establish ownership of a valid copyright, a plaintiff must prove that "the work, when viewed as a whole, is original" and satisfy the required statutory formalities. See Saenger Org., Inc. v. Nationwide Ins. Licensing Assoc., Inc., 119 F.3d 55, 59 (1st Cir.1997); see also Motta v. Samuel Weiser, Inc., 768 F.2d 481, 484 (1st Cir.) (noting that the "determination of ownership is a conclusion of law based on underlying facts"), cert. denied, 474 U.S. 1033, 106 S.Ct. 596, 88 L.Ed.2d 575 (1985). A work need only exhibit a "minimal degree of creativity" to qualify for copyright protection. Feist, 499 U.S. at 345, 111 S.Ct. 1282; see Eales v. Environmental Lifestyles, Inc., 958 F.2d 876, 880 (9th Cir.) (architect's plans for home constituted protectable expression of an idea rather than unprotectable idea where plans laid out location and size of numerous features), cert. denied sub nom. Shotey v. Eales, 506 U.S. 1001, 113 S.Ct. 605, 121 L.Ed.2d 541 (1992).

Among the statutory formalities, the Copyright Act requires registration of a work before a plaintiff may file suit. 17 U.S.C. § 411(a). The Copyright Office, after accepting an application, fee, and deposit of a representative copy of the work, see 17 U.S.C. § 408, issues a certificate of registration, which is admissible in an infringement action as "prima facie evidence of the validity of the copyright and of the facts stated in the certificate," 17 U.S.C. § 410(c). "`In judicial proceedings, a certificate of copyright registration constitutes prima facie evidence of copyrightability and shifts the burden to the defendant to demonstrate why the copyright is not valid.'" Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 813 (1st Cir.1995) (quoting Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1106 (9th Cir.1990)), aff'd by an equally divided court, 516 U.S. 233, 116 S.Ct. 804, 133 L.Ed.2d 610 (1996); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991) (presumption of validity may be rebutted).

In this case, registration was a disputed issue, as Yankee had obtained copyright registration of the architectural blueprints of the Holyoke store on September 4, 1996 (No. VAu359-960), but did not register the...

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