Course materials for ABA CLE Copyright Trolls Are Never in Fashion: Copyright Infringement Suits and Strategies

for Fighting Back (5/24/13) Charles E. Colman* IMPORTANT: Nothing in this document constitutes legal advice or should be relied on as a comprehensive statement of the law. Cases and adjacent images are not related. 1. Defensive strategies that are intuitive and tempting, but which are unlikely to succeed and/or are too fact-intensive for practical use in most circumstances a. Independent creation defense o Langman Fabrics v. Graff Californiawear, Inc., 160 F.3d 106, 115-16 (2d Cir. 1998) (Both the evidence of access and similarity, on the one hand, and of independent creation, on the other, are relevant to the ultimate issue of copying, and the conflict of that evidence creates a material issue of fact; on such a record we may not enter summary judgment for either party.) o See Peel & Co. v. Rug Mkt., 238 F.3d 391, 398 (5th Cir. 2001) (Rug Market did present some evidence of independent creation, but the district court concluded only that, in light of the Tessoros simplicity in design, use of bold geometric shapes, squares, triangles, and circular flowers, it is conceivable that Ambadi designed the Tessoro on its own accord. We do not view the evidence Rug Market presented as adequate to support a holding as a matter of law that the Tessoro was independently created; rather, a genuine question of material fact remains on this issue, which we also leave for the factfinder.)

Charles Colman is the founder of Charles Colman Law, PLLC (New York) and LAW OF FASHION. As of June 1, 2013, Charles will be an Acting Assistant Professor at NYU Law School. He is the author of COLMAN ON FASHION LAW (LexisNexis-Matthew Bender, first volume forthcoming fall 2013), in which the issues surveyed below receive far more extensive analysis. This document 2013 Charles Colman.

b. Lack of originalityat least, absent Copyright Offices denial of registration See Feist Publns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345-46 (1991) (emphasis added; internal citations omitted)
The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. 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. To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be. Id., 1.08[C][1]. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable.

In Design v. Lynch Knitting Mills, Inc., 689 F. Supp. 176, 179 (S.D.N.Y.), affd 863 F.2d 45 (2d Cir. 1988)
The meager evidence introduced by defendants to show that the Aperture design was not the product of [the plaintiffs creation] consisted only of the contention of their expert witness that it is a mere variation of a standard argyle pattern. The only actual examples of argyle patterns placed in evidence in this case were introduced by Hukafit, and the Aperture pattern is clearly not a copy of any of them. Therefore, defendants have failed to show that the copyright is invalid.

Some judges would apparently require evidence that plaintiff copied his work from the public domain in order to consider a defendants lack-of-originality defense. See discussion at Van Cleef & Arpels Logistics, S.A. v. Landau Jewelry, 547 F. Supp. 2d 356, 364 (S.D.N.Y. 2009) (emphasis added):
[T]here is nothing in the record to support defendants contention that the copyright is not valid because the Design was copied from the public domain. Defendants have provided photographs of, inter alia, the 88th Divisions clover insignia in varied incarnations, edifices utilizing the clover shape in their architectural design, and possibly infringing jewelry pieces from other companies. However, the clover shapes pictured in defendants photographs are readily distinguishable from the Design, and they do not feature the combination of elements over which plaintiffs claim copyright protection. Moreover, the fact that distinguishable clover shapes exist does not constitute evidence that plaintiffs Design was copied from the public domain. In the absence of any evidence linking the creation of plaintiffs Design to the public domain, defendants argument is untenable.

However, if the court is made aware of the character of the parties/the dispute, an attack based on lack of originality might be more viable than Feist would suggest. o See Royal Printex, Inc. v. Unicolors, Inc., 91 U.S.P.Q.2D 1439, No. CV 07-05395-VBK, 2009 U.S. Dist. LEXIS 60375, at *5-*6, *9-*10 (C.D. Cal. Jul. 8, 2009) (emphasis added):

The design of the flower in . . . the daisy design is of a six-petaled daisy flower, with a center round pistil, a short stem, and a small leaf emanating from that stem. The six petals, the stem, and the small leaf are each shadowed, and the resulting flower in both designs repeats in a manner in which the stems are turned at different angles to each other, and the flowers are relatively equidistant from each other. The background in each of the designs is a generic polka-dot (polka-dot) pattern. The predominant part of the overall design of both the daisy design and the flower design consists of the actual flowers depicted in the design, and the placement of the flowers in a repetitive pattern. [It is true that the] requisite originality for copyright protection can also be found in the combination of unoriginal (and therefore uncopyrightable) elements. [However, the] daisy design in this case does not possess at least the requisite minimum degree of creativity to qualify as an original design which is copyrightable. In the daisy design, the actual flowers, and their repetition throughout the design, constitute the predominant design elements. Neither the flowers, nor their repetitive placement, were independently created by Unicolors. The deletion of the ticking stripe background from the forties flower design, and the insertion of generic polka-dots, does not constitute the requisite originality required for a design to be copyrightable.

2. Better strategies for disposing of suitsperhaps even at motion-to-dismiss stage a. Lack of (proper) registration See, e.g., R.F.M.A.S., Inc. v. So, 619 F. Supp. 2d 39, 58 (S.D.N.Y. 2009) (Marrero, J.) (emphasis added)
The Copyright Act allows multiple items to be registered in a single application as either (1) a group registration or (2) a single work registration. The distinction between the two is critical, as the requirements for a group registration are different from those for a single work registration. The Court finds that the Registration cannot be valid as a group registration of jewelry designs. Under 17 U.S.C. 408(c)(1), [t]he Register of Copyrights is authorized to specify by regulation the administrative classes into which works are to be placed for purposes of deposit and registration. The regulations may require or permit ... a single registration for a group of related works. Under this authority, the Register of Copyrights has issued regulations permitting group registration for automated databases, related serials, daily newspapers, contributions to periodicals, daily newsletters, and published photographs. 37 C.F.R. 202.3(b)(5)-(10). However, the Register of Copyrights has not issued regulations explicitly permitting group registration of jewelry designs or sculptural works, rendering such works incompatible with group registration. Therefore, the Registration is not valid as a group registration of jewelry designs.

McLaren v. Chicos FAS, Inc., 10 Civ. 2481 (JSR), 2010 U.S. Dist. LEXIS 120185, *9, *5 (S.D.N.Y. Nov. 9, 2010) (Rakoff, J.) (on motion to dismiss)
In considering whether this prior publication of certain drawings renders invalid McLarens purported registration of the Collection as a single work, the Court notes that there is no controlling case on point, though those few decisions that have addressed similar issues relating to single work registrations lend support to Chicos view. While the views of the Copyright Office on this question are not dispositive, its interpretations, like those of any other agency, may merit some deference whatever its form, given the specialized experience and broader investigations and information

available to the agency. Morris v. Business Concepts, Inc., 283 F.3d 502, 505-06 (2d Cir. 2002) (quoting Skidmore v. Swift & Co., 323 U.S. 134, 139, 65 S. Ct. 161, 89 L. Ed. 124 (1944)). Here, the Copyright Offices interpretation of the single work regulation in light of its own practices is particularly compelling given that the regulation here in issue was promulgated to codif[y] the pre-existing Copyright Office practice of allowing copyright owners to register multiple works published together as a single work for a single fee. Kay Berry, 421 F.3d at 205 (citing 43 Fed. Reg. 965, 966 (Jan. 5, 1978) (codified at 37 C.F.R. pt. 202)). Moreover, even in the frame of these views of other courts and the Copyright Office, this Court would independently conclude that McLarens registration is invalid. The most natural reading of the regulations requirement that the copyrightable works form a single unit of publication is that the works must be first published together to qualify as such. This interpretation derives further support from the relationship between the single work registration regulation and the Copyright Acts distinct provisions for group registration of multiple works. While group registration requires the group of works to be related to one another, 17 U.S.C. 408(c)(1), the single work registration regulation contains no such requirement, but instead requires that they form a single unit of publication. It follows from this that the single work regulations term single unit of publication refers to the circumstances of the publication, rather than the relationship of the works to one another, and, further, that the prior, separate publication of a copyrightable work precludes that work from being treated later, together with other published elements, as a single unit of publication.. McLaren seeks to rely on the presumption of validity that attaches to a certificate of copyright representation. See Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (A certificate of copyright registration is prima facie evidence that the copyright is valid.). This presumption, however, is rebuttable, see id., and Chicos has rebutted [the presumption of validity] here by showing that the registration is invalid as a matter of law due to the prior registration of some of these works. Based on the allegations of the complaint alone, it cannot be disputed that McLaren published some of the illustrations in the Collection prior to November 4, 2000. According to the complaint, the mannequin illustration from the Collection that Chicos allegedly infringed was previously licensed to Pucci pursuant to the December 1998 agreement. See Compl. Exs. A & Ex. C. By licensing the mannequin illustration to Pucci so that Pucci could produce and sell mannequins based on that drawing, McLaren published the drawing within the meaning of the Copyright Act. See 17 U.S.C. 101 (defining publication to mean the distribution of copies. . . of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending, and providing that [t]he offering to distribute copies . . . to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication); see also Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 591 (2d Cir. 1999) (the publication of the derivative work, to the extent that it discloses the original work, also constitutes publication of that underlying work). [Footnote 2:] In addition, Chicos has conclusively demonstrated through judicially noticeable evidence that several other illustrations in the Collection were first published before November 4, 2000. By way of example, one of these illustrations was used as cover artwork for a book entitled You Forgot Your Skirt, Amelia Bloomer!, and McLaren applied for and obtained a copyright registration for this illustration in April 27, 2000. McCallion Decl., Exs. B-C. The Court finds that judicial notice can be taken of these and other related materials, which can therefore be considered in connection with the motion to dismiss. See Staehr v. Hartford Fin. Servs. Group, Inc., 547 F.3d 406,

425 (2d Cir. 2008)[1]. Indeed, McLaren expressly agrees that the Court should take judicial notice of these items, see Pl's Mem. Opp., 7/18/10, at 10 n.2, and thus implicitly concedes that certain of the illustrations in the Collection were first published before November 4, 2000. [The court dismissed the complaint with prejudice.]

Family Dollar Stores, Inc. v. United Fabrics Intl, Inc., 896 F. Supp. 2d 223, 229 et seq. (S.D.N.Y. 2012) (McMahon, J.) (on motion for summary judgment)
At issue is the Registrationa single registration copyrightthat, as originally filed, was for an unpublished collection that includes the Mod Squad design (as well as 18 other designs). The FD Defendants claim that the Registration does not meet the requirements of an unpublished collection because UFI published the Mod Squad and twelve other designs prior to the filing of UFI's application for an unpublished collection copyright registration. It argues that, if UFI does not have a valid registration, I must dismiss UFIs copyright infringement counterclaims, because UFI has no right to pursue them. 17 U.S.C. 411(a). The Copyright Act permits the registration of multiple works as a single work. 17 U.S.C. 504(c)(1). Copyright regulations divide these single work registrations into published and unpublished collections. See 37 C.F.R. 202.3(b)(4)(i). A published collection of works must be sold, distributed or offered for sale concurrently. United Fabrics Intl, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1259 (9th Cir. 2011). For unpublished works, there is no such requirement. Id. A group of unpublished works may be registered as a single work, upon payment of a single registration fee, but only if it consists of all copyrightable elements that are otherwise recognizable as self-contained works, and are combined in a single unpublished collection. 37 C.F.R. 202.3(b)(4)(i)(B). A combination of such elements is considered a collection if: (1) The elements are assembled in an orderly form; (2) The combined elements bear a single title identifying the collection as a whole; (3) The copyright claimant in all of the elements, and in the collection as a whole, is the same; and (4) All of the elements are by the same author, or, if they are by different authors, at least one of the authors has contributed copyrightable authorship to each element. 37 C.F.R. 202.3(b)(4)(i). Registration of an unpublished collection extends to each copyrightable element in the collection and to the authorship, if any, involved in selecting and assembling the collection. Id.

Staehr v. Hartford Fin. Servs. Group, 547 F.3d 406, at 425-26 (2d Cir. 2008) (We have previously held that it is proper to take judicial notice of the fact that press coverage, prior lawsuits, or regulatory filings contained certain information, without regard to the truth of their contents. [In] Kramer [v. Time Warner, Inc., 937 F.2d 767, 774 (2d Cir. 1991),] we found that the district court could take judicial notice of, inter alia, the publicized condition of the junk bond market during the relevant time period. The reference was not relied on for its truth, and so was not a ground for decision and does not run afoul of the rule that a district court must confine itself to the four corners of the complaint when deciding a motion to dismiss under Rule 12(b)(6). 937 F.2d at 773; accord DeBenedictis v. Merrill Lynch & Co., Inc., 492 F.3d 209, 214 (3d Cir. 2007) (taking judicial notice of USA Today and Time Magazine articles submitted by defendants).) (Emphasis added.)

It is undisputed that UFI published the Mod Squad design by selling it before the effective date of registration of the unpublished collection at issue. (Parties 56.1 Statements 24, 29.) Thus, the purely legal issue for me to resolve is whether UFIs has validly registered its copyright in the Mod Squad design as part of the unpublished collection single registration. The answer to this question is no: a published design included in an unpublished collection copyright registration application cannot be registered as part of the collection. The Copyright Offices Compendium II: Compendium of Copyright Office Practices, states that, Where the applicant seeks registration as an unpublished work and provides the Office with a statement of facts which clearly show that publication has occurred, the Office will not register a claim to copyright in the work as unpublished. United States Copyright Office, Compendium of Office Practices II 904(5). [T]he Mod Squad design, which was concededly published prior to the registration of the unpublished collection at issue, is not protected by UFIs putative Registration (VAu 978-345). This prior publication does not invalidate registration of the unpublished elements of the collection (there are apparently six previously unpublished designs among the 19 in the collection), but it does invalidate the registration as to the previously published designs, including the one in the case at bar. Thus, I find that the FD Defendants have rebutted the presumption of validity that attached to UFIs certificate of copyright registration. Because the Mod Squad design is not covered by the Registration, UFI cannot bring its counterclaims for infringement of its Mod Squad design.... The question for the Court is whether the inclusion of 13 previously unpublished designsincluding the design that is the basis for this lawsuitin a collection of purportedly unpublished designs is a material error or simply a technical error. Because the error invalidates the registration as to the very design that is the subject of this lawsuit, I conclude that it is material. In L.A. Printex [v. Aeropostale, 676 F.3d 841, 853 (9th Cir. 2012),] the panel held that the inclusion of two previously published designs in an unpublished collection registration admittedly an errordid not invalidate the registration, or render the certificate of registration incapable of supporting an infringement action, because, in part, the record did not demonstrate that the plaintiff intended to defraud the Copyright Office. L.A. Printex Indus., 676 F.3d at 854. However, L.A. Printex presented the inverse of the situation before me: in that case the plaintiff did not assert that the defendant infringed the previously published designs that had been improperly included in the collection registration. Rather, it alleged that the defendant infringed an unpublished design in the registered collection. Accordingly, the panel found inclusion of the published designs was a minor technical error that did not affect the registration of the unpublishedor properly includeddesigns, which the plaintiff nevertheless corrected with the assistance of the Register of Copyrights and a supplementary registration. See id. at 853-54. It would have been inequitable for the panel to invalidate the whole copyright registration, even the portions that were properly registered, absent a showing of fraud. [The] prior publication [in this case] does not invalidate registration of the unpublished elements of the collection (there are apparently six previously unpublished designs among the 19 in the collection), but it does invalidate the registration as to the previously published designs, including the one in the case at bar. Thus, I find that the FD Defendants have rebutted the presumption of validity that attached to UFIs certificate of copyright registration. See McLaren, 2010 U.S. Dist. LEXIS 120185, 2010 WL 4615772, at *4 (finding presumption of validity rebutted, and holding that a copyright registration was invalid as a matter of law). Because the Mod Squad design is not covered by the

Registration, UFI cannot bring its counterclaims for infringement of its Mod Squad design. UFIs arguments to the contrary are unavailing. The main thrust of UFFs argument is that a showing of fraud on the Copyright Office is required to invalidate a copyright registration. But that is only the case where a party seeks to invalidate a copyright based on simple technical errors in a registration application[.] Here, by contrast, UFI alleges that the FD Defendants infringed a previously published work that it included as part of a collection of unpublished works. Furthermore, UFI did not supplement its original registration by deleting the previously published Mod Squad design from the collection registration; instead it deleted the unpublished designs from the collection, thus rendering the original registration wholly nugatory. That cannot be considered a minor technical error.

b. Thin copyright-more discerning observer/merger/scnes faire An explanation of the general principle, reflected in various doctrines o Matthews v. Freedman, 157 F.3d 25, 28 (1st Cir. 1998) (emphasis added)
An alleged infringing work taken as a whole may seem substantially similar to the copyrighted work taken as whole, but the impression of similarity may rest heavily upon similarities in the two works as to elements that are not copyrightable--because those elements are the underlying ideas, or expressions that are not original with the plaintiff, or for some like reason. See Feist, 499 U.S. at 358-60; CMM Cable, 97 F.3d at 1515. Courts have used various formulas to isolate the protectible expression in the copyrighted work to determine whether the alleged infringing work is substantially similar to that protectible expression.

This basic idea has been recognized for decades, including in the textile arena o See Kepner-Tregoe, Inc. v. Carabio, No. 8-71025, 1979 U.S. Dist. LEXIS 12910, at *24 (E.D. Mich. Jul. 23, 1979) (emphasis added)
[T]he amount of protection enjoyed depends upon the amount of protectible originality in the original work. Wilson & Co. v Irving J. Dorfman Co., 268 F Supp 711, 713, 154 USPW 226, 228-229 (S.D. N.Y. 1967). As stated in another context in Dorsey v Old Life Ins. Co., 98 F 2d 872 (10th Cir. 1938), The degree of protection afforded by the copyright is measured by what is actually copyrightable in the publication and not by the entire publication. 98 F 2d at 874. This can be illustrated by two fabric cases. In Lanratex v Textile Corp. v Citation Fabric Corp., 328 F Supp 554 (S.D. N.Y. 1971), the plaintiff copyrighted a fabric design that was only a slight variation on a general one in the public domain. The defendant produced a design that was a slight variation of plaintiffs design. The court held no violation because, though the two were similar, the plaintiffs design contained so little that was new, it would be improper to find defendants design a violation. In Concord Fabrics, Inc. v Generation Mills, Inc., 328 F Supp 1030, 169 USPQ 470 (S.D. N.Y. 1971), the same holding resulted from similar facts. That court reasoned that the defendant had the right to draw upon all that had gone before in making its design, just as did the plaintiff, and concluded that if the plaintiff makes only a small variation on a general theme, he is entitled to little protection.

How has this principle been applied (post-Feist)? o Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 765, 766 (2d Cir. 1991).
It must be kept in mind that the scope of copyright protection for Folios fabric design found above is narrow, extending only to the works particular expression of an idea, not to the idea itself . . . . Hence, what is protected in this case is the Folio Rose itself and the way in which that rose is arranged; the copyright umbrella does not cover the idea of arranging roses generally in a straight line pattern . . . . [Where, as here,] only some of the design enjoys copyright protection, the observers inspection [that occurs during the infringement analysis] must be more discerning. In considering substantial similarity between two items, we review the district courts findings de novo -- not on the clearly erroneous standard -- because what is required is only a visual comparison of the works, rather than credibility, which we are in as good a position to decide as was the district court. See Business Trends Analysts, Inc. v. Freedonia Group, Inc., 887 F.2d 399, 402-03 (2d Cir. 1989). We have viewed the fabrics bearing each of the designs at issue in this case and, applying the more discerning ordinary observer test, conclude there was no copying. Although the roses in both designs are placed against the background in a similar straight line pattern, the roses themselves are not substantially similar. As the district court correctly pointed out, each of the roses in Pattern # 1365 is identical, while the roses in the Baroque Rose pattern differ from each other in their details and nuances. The Baroque Roses appear to be in soft focus and the Folio Rose has a sharper, clearer image. Moreover, though playwrights and poets from William Shakespeare to Gertrude Stein have extolled the beauty of this five-petaled flower, by the roses very nature one artists rendering of it will closely resemble another artists work. For these reasons, we believe that an average lay observer would [not] recognize the alleged copy as having been appropriated from the copyrighted work. Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir. 1977) (quoting Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966)).

o IMPORTANT: This determination, especially post-Iqbal, can potentially be made on a motion to dismiss. Certain rules can assist in this effort: Wildlife Express Corp. v. Carol Wright Sales, 18 F.3d 502, 506 n.1 (7th Cir. 1994) ([T]he appellate court, like the district court, can make a visual comparison of the works in question. Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 766 (2d Cir. 1991); Business Trends Analysts, Inc. v. Freedonia Group, Inc., 887 F.2d 399, 402 (2d Cir. 1989). In this circuit, when reviewing the products in issue for substantial similarity, we permit side-by-side comparison, Roulo v. Russ Berrie & Co., Inc., 886 F.2d 931, 937 (7th Cir. 1989), cert. denied, 493 U.S. 1075 (1990), and an ocular comparison, Atari, 672 F.2d at 619, of the works

being analyzed for similarity, but follow the clearly erroneous standard in reviewing the district courts conclusions.)2 Effie Film, LLC v. Pomerance, 11 Civ. 7087 (JPO), 2012 U.S. Dist. LEXIS 179030, at *69 (S.D.N.Y. Dec. 18, 2012) (Oetken, J.) (In copyright cases, courts have recognized that they may judicially notice the generic elements of creative works. (citing Davis v. Am. Broad. Companies, Inc., 10 Civ. 167, 2010 U.S. Dist. LEXIS 76145, at *5 (W.D. Mich. Jul. 28, 2010)) (emphasis added).

What elements in a work can trigger the more discerning analysis? (Note: These bleed into issues of originality, idea/expression and scnes faire. In extreme cases, these rules might justify invalidating a copyright altogether.) o Lack of novelty Concord Fabrics, Inc. v. Generation Mills, Inc., 328 F. Supp. 1030, 1033 (S.D.N.Y. 1971) (because the concept of alternating squares of solids and plaids is shown not to be novel, the court has necessarily mixed into the emulsion of pertinent ideas the burden upon plaintiff in such a case of proving extremely close copying) (note that this case pre-dates Feist) See also Folio Impressions

o Incorporation of public-domain elements Todd v. Mont. Silversmiths, Inc., 379 F. Supp. 2d 1110, 1112 (D. Colo. 2005) (denying copyright protection altogether for barbedwire-style jewelry, on the ground that copyright was not available for purely functional elements, 17 U.S.C. 102(b), public domain elements, Nimmer on Copyright 1.05[A][2], scenes a faire, id. at [B][3], forms of expression which are inextricably linked to the underlying idea, id. at [B][4], and simple changes of medium, id. at 2.08[C][2])

o Portrayal of real-life or familiar objects Samara Bros. v. Wal-Mart Stores, 165 F.3d 120, 132 (2d. Cir. 1998), abrogated on other grounds, 529 U.S. 205 (2000) (copyrights depicting familiar objects, such as the hearts, daisies, and strawberries in Samaras copyrights, are entitled to narrow

See also Cosmos Jewelry, Ltd. v. Po Sun Hon Co., No. 06-56338, No. 06-56420, No. 07-55333, 2009 U.S. App. LEXIS 6187, at *1 (9th Cir. Mar. 24, 2009) (affirming dismissal of copyright claim during bench trial in which the district judge held Cosmoss and Hons jewelry in her hand, examined them closely, and said they do not look alike, further supporting her ruling under stock elements rationale).

protection [as against the] virtually identical copying [found here]) Funrise Canada (HK) Ltd. v. Zauder Bros., Inc., 99-CV-1519 (ARR), 1999 U.S. Dist. LEXIS 22431, at *28-*29 (E.D.N.Y. Jul. 8, 1999) (Put another way, the plaintiff has not convinced the court that it can claim copyright ownership over the duplication of common real-life uniform features; the court does not agree that plaintiff can prevent the defendants from copying real-life emergency worker outfits merely because it copied them first.)

o Relatedly, material that is standard in the treatment of a given idea Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 765-66 (9th Cir. 2003) (when similar features of a work are as a practical matter indispensable, or at least standard, in the treatment of a given idea, they are treated like ideas and are therefore not protected by copyright) Cosmos Jewelry, Ltd. v. Po Sun Hon Co., No. 06-56338, No. 0656420, No. 07-55333, 2009 U.S. App. LEXIS 6187, at *2-*3 (9th Cir. Mar. 24, 2009) (That both designs resemble the plumeria flower is not enough for a copyright violation under Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) (finding no copyright protection for jewelry in the shape of a bee because the idea and expression of the bee were inseparable), and Satava v. Lowry, 323 F.3d 805, 810-11 (9th Cir. 2003) (finding no copyright protection for glass in glass sculpture of a jellyfish because of an insufficient quantum of original ideas). The district court considered whether Cosmoss unprotectable design elements could be protected in combination, finding that the sand-blast finish on the body of the petals and high polish finish on their edges either individually or in combination are standard, stock or common to the medium of gold jewelry making--i.e. they are scenes a faire. The finding [that these components were not protectable in either form] is not clearly erroneous.)

o Be careful which principle(s) you invoke/emphasize in which jurisdiction, as the procedural ramifications may vary. See, e.g., Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003), cert. denied, 540 U.S. 983 (2003) (The Ninth Circuit treats scenes a faire as a defense to infringement rather than as a barrier to copyrightability.) 3. Defensive strategies more appropriate for summary judgment (probably)

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a. On rebutting the presumption of validity accorded to copyrights in works registered within five years of first publication On factual questions about validity, the presumption carries enough weight to shift the burden of proof, in the traditional sense. United Fabrics Intl, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257-58 (9th Cir. 2011) (emphasis added)
It is true that, at oral argument, counsel for Macys asserted that it had rebutted the presumption of copyright validity. But, when we asked Macys attorney to identify evidence in the record sufficient to rebut the presumption of copyright validity, he merely argued, inter alia, that a United representative testified at a deposition that its designs were not published as a true collection and that there is also no evidence that [these designs] met the requirements of an unpublished collection. Counsel also asserted that Macys introduced evidence that the transfer was completely invalid, but to support this assertion, he did nothing more than contend that United failed to provide evidence of the transfer. By repeatedly mentioning that United provided no evidence, we are skeptical that Macys understands that it bears the burden of providing some evidence of invalidity. Regardless, Macys cites no authority that such facts rebut the presumption of copyright validity.

But defendants should remind the court that the presumption carries less weight where a dispute about the validity of a copyright requires primarily legal analysis. See, e.g., Metal Morphosis, Inc. v. Acorn Media Publ., Inc., 639 F. Supp. 2d 1367, 1374 (N.D. Ga. 2009) (emphasis added)
A certificate of registration constitutes prima facie evidence of the validity of a copyright, but only if it was obtained within five years of the first publication of the work. 17 U.S.C. 410(c). Here, the Plaintiff concedes that the certificate of registration was obtained outside of that window, so its evidentiary weight is within the discretion of this Court. Id. In the context of originality, its value is not substantial. Unlike a patent claim, a claim to copyright is not examined for basic validity before a certificate issues. Midway Mfg. Co. v. Bandai-America, Inc., 546 F. Supp. 125, 143 (D.N.J. 1982) (quoting H.R. Rep. No. 94-1476, at 157 (1976), reprinted in 1990 U.S.C.C.A.N. 5659, 5773).)

See also Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 668 n.5 (3d Cir. 1990) (It may be that the correct approach in situations where there has been a material, but inadvertent omission, is to deprive the plaintiff of the benefits of 410(c) and to require him to establish the copyrightability of the articles he claims are being infringed.) b. Lack of originality based on evidence obtained during discovery

Meridian Textiles Inc. v. Topson Downs of California, Case 2:11-cv-08351RGK-AGR, at *3 (780) (C.D. Cal. Aug. 24, 2012) (emphasis added)
Considering the evidence presented by the parties, the Court finds that Defendants succeed in rebutting the presumption. While the depiction of zebra stripes as they exist in classical form does not deprive the design of originality, there must be something original added to its expression. See Kamar Intern., Inc. v. Russ Berrie and Co., 657 F.2d 1059, 1061 (9th Cir. 1981). Comparing Plaintiffs Zebra Design to the various other zebra patterns introduced by Defendants, the Court finds the differences nearly

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indistinguishable. Scrutinizing both Plaintiffs and other zebra designs, the Court discerns only minute differences in the thickness of the lines and orientation of the pattern. These minute differences do not rise to the level of originality. Although the amount of creative input by the author required to meet the originality standard is low, it is not negligible. Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003) (citing Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991)). There must be something more than a merely trivial variation, something recognizably the artists own. Id. (citing Three Boys Music Corp. v. Bolton, 212 F.3d 477, 489 (9th Cir. 2000)). In this instance, the Court finds nothing that is recognizably the artists own. In fact, looking to the evidence, the Court notes that Defendants expert includes several zebra designs in Exhibit E to her declaration. (See Young Decl., 12.) According to her declaration, Plaintiffs Zebra Design is reproduced at the bottom of each page in the exhibit as a point of comparison. Id. However, there is no recognizably consistent design that appears at the bottom of each page. While this may be an error or oversight on the part of Defendants, what is significant is the fact that the Court is unable to discern which of the designs depicted may, in fact, be Plaintiffs Zebra Design. This fact lends overwhelming support to the finding that any variation found in the Zebra Design is merely trivial, lending nothing recognizable as the artists design. The Court denies summary judgment as to the validity of Plaintiffs copyright in the Zebra Design. Rather, the Court finds that, as a matter of law, Plaintiffs copyright in the Zebra Design is invalid.

o For this strategy to work, the presumption of validity will typically require that defendant place similar works into the record. See Prince Group v. MTS Prods., 967 F. Supp. 121, 125 (S.D.N.Y. 1997) (Defendants, however, have not produced any evidence of any other standard stars and clouds designs. Furthermore, although a star or cloud alone may not on their own be copyrightable, the design as it is composed is sufficiently original.) The greater the volume of works shown to the court, the better. o Compare Apple Barrel Prods. v. Beard, 730 F.2d 384, 388 n.8 (5th Cir. 1984) (We do not express our own opinion as to whether plaintiffs [work] was sufficiently original or copyrightable, as that question is properly suited for the trier of fact. We do note error, however, in the district courts reasoning that a work cannot be copyrightable if it

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presents nothing new. Novelty is not required in a work in order for the work to be considered original or copyrightable. Sid and Marty Krofft Television Productions, Inc. v. McDonald's Corporation, 562 F.2d 1157, 1163 n. 5 (9th Cir. 1977).) (Emphasis added.) Express, LLC v. Forever 21, Inc., No. CV 09-4514 ODW-VBKx, 2010 U.S. Dist. LEXIS 91705, *17-*18, *20, *21 (C.D. Cal. Sep. 2, 2010) (emphasis added)
At best, [plaintiffs designer Michael] Tower was able to recall that he colored-up [earlier] Plaids with certain colors Express selected for its seasonal clothing line. Tower Deposition at 54-56. However, as Tower testified that he has no recollection of the original plaid designs, let alone knowledge of how they were originally colored, Express cannot produce any evidence at trial of what color substitutions Tower may have made. Thus, the mere fact that Tower claims he colored-up the Plaids does nothing to cure the utter lack of evidence upon which a juror could reasonably conclude that any of the Plaids contains content original to Express. . . . [E]ven if Tower could recall that he made particular color substitutions, mere changes in color are generally not subject to copyright protection. 37 C.F.R. 202.1 ([E]xamples of works not subject to copyright [include] mere variations of . . . color)[.3] [E]ven if Expresss copyright registration[s] are entitled to presumptive effect, Defendants have rebutted that presumption by producing Towers deposition testimony [and] the Court grants summary judgment in favor of each Defendant with respect to Expresss claims for copyright infringement.

o N.B. The court appeared far more willing to find that defendant had rebutted plaintiffs presumption of validity because Express [had] not indicate[d] in any of the four copyright applications that the Plaids were created based upon pre-existing designs. Nor has Express subsequently amended any of its registrations to disclose a source for any of the Plaids. Id. at *9. Royal Printex, Inc. v. Unicolors, Inc., 91 U.S.P.Q.2D 1439, CV 07-05395-VBK, 2009 U.S. Dist. LEXIS 60375, at *6-*8 (C.D. Cal. Jul. 8, 2009) (emphasis added)
The deletion of the ticking stripe background from [a preexisting 1949] flower design, and the insertion of generic polka-dots, does not constitute the requisite originality required for a design to be copyrightable. For example, seemingly identical background polka-dots are found in design no. 611212, which is part of VA 1-392-580. While the presence of generic polka-dots may be part of a copyrightable design, in this case, they do not impart even a minimum level of originality such as would make the daisy design copyrightable. Thus, the Court concludes that the daisy design is not sufficiently original to warrant copyright protection. Royal did not copy any protectable elements of the daisy design. Juxtaposing the uncopyrightable flowers, with their repetitive pattern, over the polka-dot background does not constitute sufficient originality to warrant copyright protection. Consequently, Unicolors did not have a basis for registering the daisy design

But see Boisson v. Banian Ltd., 273 F.3d 262, 271 (2d Cir. 2001) (Color by itself is not subject to copyright protection. See 37 C.F.R. 202.1(a). Nevertheless, an original combination or arrangement of colors should be regarded as an artistic creation capable of copyright protection [citing Nimmer.] [The case law] teach[es] that even though a particular color is not copyrightable, the authors choice in incorporating color with other elements may be copyrighted. [This] leads us to conclude it was clear error for the district court to find that plaintiffs choice of colors in the School Days quilts was an unprotectible element.)

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with the United States Copyright Office. Because the Court finds and concludes that the daisy design is not copyrightable, [it] invalidates the copyright[.]

Where a work made abroad has been designated as a work made for hire, foreignlaw principles may have been ignoredand can work to a defendants benefit.4 4. Proper test for evaluating infringement a. Second part of thin copyright test Cameron Indus. v. Mothers Work, Inc., 338 Fed. Appx. 69, 70, No. 08-2144-cv, 2009 U.S. App. LEXIS 16055, at *2 (2d Cir. Jul. 22, 2009) (When a product contains both protectable and unprotectable elements, we have applied a "more discerning ordinary observer test, id. at 1003 (internal quotation marks omitted), in which we attempt to isolate the protectable, artistic aspects of a work from the elements that are not protectable, Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir. 1994).) o But see id. (We have declined, however, to dissect [designs] into their separate components[] and compare only those elements which are in themselves copyrightable, noting that taking this approach to its logical conclusion could lead to a decision that there can be no originality in a painting because all colors of paint have been used somewhere in the past. Knitwaves, 71 F.3d at 1003 (internal quotation marks omitted).) Compare Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003-04 (2d Cir. 1995) (emphasis added)
We do not consider the rather specialized facts of Folio Impressions as authority for the broad proposition which Lollytogs advances: that, in comparing designs for copyright infringement, we are required to dissect them into their separate components, and compare only those elements which are in themselves copyrightable. As the district court noted, if we took this argument to its logical conclusion, we might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past. Transcript of proceedings of Sept. 1, 1992, at 4.

See discussion at Itar-Tass Russian News Agency v. Russian Kurier, 153 F.3d 82, 90, 88 (2d Cir. 1998) ([T]he Copyrights Act itself [with narrow exceptions] contains no provision relevant to the pending case concerning conflicts [of law] issues. Choice of law issues in international copyright cases have been largely ignored in the reported decisions and dealt with rather cursorily by most commentators. Examples pertinent to the pending appeal are those decisions involving a work created by the employee of a foreign corporation. Several courts have applied the United States work-for-hire doctrine, see 17 U.S.C. 201(b), without explicit consideration of the conflicts issue.); Van Cleef & Arpels Logistics, S.A. v. Landau Jewelry, 583 F. Supp. 2d 461, 463-64 (S.D.N.Y. 2008) (Scheindlin, J.) (Under Second Circuit law, international copyrights are subject to a bifurcated choice of law analysis. When determining the initial owner of a copyright, a court must look to the law of the country in which the work originated. However, the scope of the rights that attend copyright ownership is determined by the country in which the copyright is to be enforced. This is also known as the national treatment principle. Ongoing copyright ownership and the attendant question of copyright abandonment are questions of scope rather than initial ownership, and they are therefore determined according to the law of the country of enforcement.).

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It is commonplace that in comparing works for infringement purposes -- whether we employ the traditional ordinary observer test or the Folio Impressions more discerning inquiry -- we examine the works total concept and feel. See Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 500 (2d Cir. 1982). As the Supreme Courts decision in Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991), makes clear, a work may be copyrightable even though it is entirely a compilation of unprotectible elements. See id. at 362. In this case, Knitwaves original contribution consists not merely -- as Lollytogs would have it -- in arranging leaves or squirrels in a specific pattern, but in (1) selecting leaves and squirrels as its dominant design elements; (2) coordinating these design elements with a fall palette of colors and with a shadow-striped (for the Leaf Sweater) or a four-paneled (for the Squirrel Cardigan) background; and (3) arranging all the design elements and colors into an original pattern for each sweater. Viewed in this way, it is clear to us that Lollytogs Leaf and Squirrel sweaters are substantially similar to Knitwaves. Lollytogs has chosen to feature the same two fall symbols that Knitwaves used, leaves and squirrels. Not only do Lollytogs renderings of these symbols substantially resemble Knitwaves' renderings, but Lollytogs has employed them in virtually the same manner as Knitwaves has (as felt appliques stitched to the sweaters surface); on strikingly similar backgrounds (shadow-striped for the Leaf Sweater, and four-paneled for the Squirrel Cardigan); and in virtually the same color scheme. An observer viewing the sweaters side by side cannot help but perceive them as coming from one creative source.

But see DiTocco v. Riordan, 496 Fed. Appx. 126, 128 (2d Cir. 2012) (emphasis added)
Where, as here, we are comparing subject matter that contains both protectible and unprotectible elements, we apply the more discerning ordinary observer test to determine substantial similarity: we must attempt to extract the unprotectible elements from our consideration and ask whether the protectible elements, standing alone, are substantially similar. See Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995) (emphasis in original) (internal quotation marks omitted). In making this determination, we compare the works total concept and overall feel. Gaito, 602 F.3d at 66 (internal quotation marks omitted). The copyright holder must be protected not only from literal copying but also from infringement that is apparent only by comparing the aesthetic import of the works in their entirety. See id. However, ideas are not protected, only their expression. See 17 U.S.C. 102(b); Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (Hand, J.); Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986). Similarly, this Court withholds copyright protection from scenes a faire, which are sequences of events that necessarily result from the choice of a setting or situation. Williams, 84 F.3d at 587 (internal quotation marks omitted). [Applying this standard, the court affirmed the lower courts dismissal.]

o Accord. Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 608-09 (1st Cir. 1998) (emphasis added)
The ordinary observer test was incorporated by the Second Circuit, in Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946), as the second step in a two part test for copyright infringement. Pursuant to that test, the court first must determine whether there has been copying. Id. at 468. This step involves dissection of the work, perhaps aided by expert testimony, to assess whether there are sufficient articulable similarities to justify a finding that the defendant has copied from the protected work. Id. Second, once copying is established, the court must determine whether the copying is sufficiently substantial to constitute unlawful appropriation (illicit copying). Id. That is, copying

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only trivial aspects of anothers work will not result in substantial similarity; it is only when the copying is sufficiently extensive that infringement occurs. Under this second step of the analysis, therefore, the trier of fact applies the ordinary observer test, unaided by dissection or expert testimony, to determine whether the copying resulted in substantial similarity between the works. Id. See also Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir.), cert. denied, 449 U.S. 841 (1980); Universal Athletic Sales Co., 511 F.2d at 907. This test provides a workable, flexible framework for copyright infringement analysis. The first step of the analysis accomplishes at least two important goals. As a preliminary matter, the court can dissect the copyrighted work to identify those aspects of the expression that are not necessarily mandated by the idea it embodies. See Reyher v. Childrens Television Workshop, 533 F.2d 87, 91 (2d Cir.) (discussing the difficult task [of] distill[ing] the nonprotected idea from protected expression), cert. denied, 429 U.S. 980 (1976). At this point, the court can focus on whether [and to what extent] the idea is capable of various modes of expression. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984). By dissecting the accused work and identifying those features which are protected in the copyrighted work, the court may be able to determine as a matter of law whether or not the former has copied protected aspects of the latter. [Footnote omitted.] The court can also determine, in at least a general way, those aspects of the work that are protected by the copyright and that should be considered in the subsequent comparative analysis under the ordinary observer test. [Footnote 9: For example, the court may find that the idea and expression are so inseparable that copying of the work is not prohibited or that only exact reproduction of the work will justify a finding of infringement.] Assuming copying of protected aspects is established, the trier of fact can then assess pursuant to the ordinary observer test whether there is substantial similarity between the protected expression and the accused work.

Compare L.A. Printex Indus. v. Aeropostale, Inc., No. 10-56187, 2012 U.S. App. LEXIS 12033, at *11-*12, *16, *21-*22 (9th Cir. Jun. 2012)
To determine whether two works are substantially similar, we apply a two-part test. Smith, 84 F.3d at 1218. The extrinsic test is an objective comparison of specific expressive elements; it focuses on the articulable similarities between the two works. Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002) (quoting Krofft, 562 F.2d at 1164). The intrinsic test is a subjective comparison that focuses on whether the ordinary, reasonable audience would find the works substantially similar in the total concept and feel of the works. Id. (quoting Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir. 1994)). Summary judgment is not highly favored on questions of substantial similarity in copyright cases. Shaw v. Lindheim, 919 F.2d 1353, 1355 (9th Cir. 1990) (quoting Narell v. Freeman, 872 F.2d 907, 909 (9th Cir. 1989)). Summary judgment is appropriate if the court can conclude, after viewing the evidence and drawing inferences in a manner most favorable to the non-moving party, that no reasonable juror could find substantial similarity of ideas [sic] and expression. Id. (quoting Narell, 872 F.2d at 909-10). Where reasonable minds could differ on the issue of substantial similarity, however, summary judgment is improper. Id. ... Though the Second Circuits ordinary observer and more discerning ordinary observer tests differ somewhat from our two-part extrinsic/intrinsic test for substantial similarity, [Knitwaves, 71 F.3d at 1002-03; Folio Impressions, Inc. v. Byer California,

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937 F.2d 759, 766 (2d Cir. 1991)] its reasoning, at least in the context of fabric designs, is persuasive, and it guides our comparison of the designs in this case.... [B]ecause we conclude that stylized fabric designs like C30020 are properly entitled to broad copyright protection, it is not necessary that Defendants design be virtually identical to infringe. See Mattel, 616 F.3d at 914.

Other points to remember for infringement analysis in fabric pattern context o Scale (treatment in case law varies) See, e.g., Cameron Indus. v. Mothers Work, Inc., 338 Fed. Appx. 69, 71, No. 08-2144-cv, 2009 U.S. App. LEXIS 16055, at *4-5 (2d Cir. Jul. 22, 2009) (emphasis added)

Cameron suggests that we should not take the dimensions of the designs into account. Indeed, it supplied the Court with comparable garments, one made of the defendant's fabric and one made of its own fabric, except the latter was reduced to a scale substantially below that in which it was in fact produced to match the scale of the defendants. In the case before us, in light of the differences in design, we would find an absence of substantial similarity even were the scale of the fabrics identical and therefore need not address Camerons contention. We note in passing, however, that size is one factor that we have indeed considered in comparing designs in appropriate cases. See Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1093 n.5 (2d Cir. 1977) (Both fabrics use brown and camel or beige on a light-colored background to form a plaid design consisting of intersecting diamonds with an interior dimension of approximately four inches . . . . When the Joan Fleetwood Spice fabric is placed over a portion of the Novelty fabric, the design, dimensions and colors match-up . . . .). And difference in scale may be especially important when dealing with cases that address similar but subtly distinct patterns or that address the use, in essentially original ways, of items that are in the public domain.

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o Color (treatment in case law varies) See, e.g., Imperial Textile Co. v. Ametex Fabrics, Inc., 682 F. Supp. 18, 20 (S.D.N.Y. 1987) (emphasis added)

[A]lthough Ametexs subsequent reproductions of Imperials design in different colors cause them not to bear the same degree of similarity to Imperials design as the charcoal pattern, given the finding of initial infringement by such clear and convincing evidence defendant cannot avoid responsibility for further infringement because its reproductions of the design in other color combinations, viewed in a vacuum, are not so obviously similar. See Novelty Textile Mills, 558 F.2d at 1094 n.6 (once a copyrighted design is found to have been copied, mere changes in the color scheme on the copied design would ordinarily not protect the defendant from a claim of infringement).

See also Davis v. Gap Inc., 246 F.3d 152, 172-73 (2d Cir. 2001) (Leval, J.) (de minimis doctrine, though rarely discussed in copyright opinions, is important) Remind the court that even if an original work was copied, copyright law does not consider that act inherently deviousrather, it is affirmatively permitted under appropriate circumstances. See Segrets, Inc. v. Gillman Knitwear Co., 207 F.3d 56, 65-66 (1st Cir. 2000) (noting that in some instances, an artist [can] avoid infringement by intentionally making substantial alterations in the design of a copyrighted work so as to provide a substantially different expression of the idea embodied in the copyrighted work) (internal citations omitted).

5. Further discussion

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