Summary judgment is appropriate if the evidence offered
demonstrates that there is no genuine issue as to any material
fact and the moving party is entitled to judgment as a matter
of law. Anderson v. Liberty Lobby, 477 U.S. 242, 106 S.Ct.
2505, 91 L.Ed.2d 202 (1986). The burden rests on the moving
party to demonstrate the absence of a genuine issue of material
fact, Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct.
1598, 1608, 26 L.Ed.2d 142 (1970), and the Court must view the
facts in the light most favorable to the non-moving party.
United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct.
993, 994, 8 L.Ed.2d 176 (1962).
I. Copyright Infringement
Defendant argues, based on the deposition testimony of Isaac
Sutton, that plaintiff's copyright certificate is per se
invalid because Sutton and Kao collaborated in creating the
copyrighted text and photographs, making them co-authors,
whereas the copyright certificate lists Sutton as the only
author. Authorship is, however, an issue of fact precluding
summary judgement. See Morita v. Omni Publications Int'l, Ltd.,
760 F. Supp. 45 (S.D.N.Y. 1991). Accordingly, defendant's motion
for summary judgment dismissing Count 1 is denied. The Court
rejects defendant's argument that plaintiff's copyright is
invalid for lack of notice since, even though the catalog sheet
lacked notice, all copies of the copyrighted work, i.e., the
packages themselves, bore proper notice.
II. Trademark and Trade Dress Infringement
Starcrest argues that it is entitled to summary judgment on
plaintiff's claim for trade dress infringement on the grounds
that the design of plaintiff's Travel Hot Pot is solely
functional, citing Isaac Sutton's testimony that Sutton
designed the product to be "durable enough to withstand packing
in a suitcase" and to correct for problems in size. Gerber
Aff., Exh. A at 9-11 (Deposition of Isaac Sutton). Whether a
product is functional for purposes of precluding a Lanham Act
claim is an issue of fact. See Scan-Plast Indus., Inc. v.
Scanimport America Inc., 652 F. Supp. 1156, 1162 (E.D.N Y
1987); Gemveto Jewelry Co. v. Jeff Cooper Inc., 568 F. Supp. 319
(S.D.N.Y. 1983). Accordingly, defendant's motion for summary
judgment dismissing Count 2 is denied. The Court declines to
hold as a matter of law that post-purchase confusion pertaining
to use of the SIE mark on Intermarket's Jet Pots is not
actionable. Defendant has not cited any authority in this
circuit in support of that proposition.
III. Design Patent Infringement
In support of its motion for summary judgment on Count 4,
defendant argues that the design of the Travel Hot Pot is not
patentable because it is purely functional. Katz Aff. ¶ 6.
Since every patent is presumed valid, the party asserting
invalidity must establish facts leading to that conclusion by
clear and convincing evidence. See Lemelson v. Synergistics
Research Corp., 669 F. Supp. 642 (S.D.N.Y. 1987).
Defendant has also submitted an English translation of a
Taiwanese patent registered May 1, 1987 for a "Travel Hot Pot"
which is accompanied by drawings of a product substantially
resembling plaintiff's patented product. Gerber Aff., Exh. 2.
This document raises the question of whether plaintiff's design
patent is invalid on the grounds that it is obvious in light of
the prior art. See Leesona Corp. v. Varta Batteries, Inc.,
522 F. Supp. 1304, 1340 (S.D.N.Y. 1981) (foreign patent may be used
in evaluating state of the prior art).
Functionality is an issue of fact not resolvable on summary
judgment. See J.G. Furniture Co. v. Litton Business Sys., Inc.,
436 F. Supp. 380 (S.D.N.Y. 1977). Similarly, although the issue
of patent validity is ultimately one of law, see Graham v. John
Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545
(1966), the scope of prior art is necessarily a factual
inquiry. Id. Specifically, the filing date of the Taiwanese
patent is illegible on the copy in the record, and this date is
relevant on the issue of whether the invention was "described
in a printed publication in . . . a foreign country" under
35 U.S.C. § 102(a) or whether the subject matter as a whole would
have been obvious under 35 U.S.C. § 103 to a person having
ordinary skill in the art at the time the invention was made,
which on this record is deemed to be the filing date of July
1985. Accordingly, defendant's motion for summary judgment
dismissing Count 4 is denied.
IV. Common Law Claims
Plaintiff's state common law clams are for tortious
interference with prospective business relations (Count 3),
common law fraud (Count 5) and common law unfair competition
(Count 6). Because the unfair competition claim raises the
issue of likelihood of confusion, which is an issue of fact,
summary judgment must be denied. See Merritt Forbes & Co. v.
Newman Inv. Sec., Inc., 604 F. Supp. 943, 956 (S.D.N.Y. 1985).
Similarly, factual issues including to what extent plaintiff
processed returns of the allegedly infringing merchandise in
reliance on the Sutton warranty cards returned with the
merchandise preclude summary judgment on plaintiff's fraud
claim. Cf. LaBelle v. Chereskin,  Fed.Sec.L. Rep. (CCH) ¶
95,713, 1991 WL 3050 (S.D. N.Y. Jan. 9, 1991) (in connection
with a claim for securities fraud under § 10(b) of the
Securities Exchange Act of 1934, reliance is an issue of fact).
See also Plaintiff's Supplemental Memorandum in Opp. at 3.
Finally, on its claim for tortious interference with
prospective business advantage, plaintiff must show "the
defendant's interference with business relations existing
between the plaintiff and a third party, either with the sole
purpose or of harming the plaintiff or by means that are
`dishonest, unfair or in any other way improper.'" PPX Enter.,
Inc. v. Audiofidelity Enter., Inc., 818 F.2d 266, 269 (2d Cir.
1987) (quoting Martin Ice Cream Co. v. Chipwich, Inc.,
554 F. Supp. 933, 945 (S.D.N.Y. 1983)). A contract need not exist.
The tort will lie for interference with or injury to a business
relationship not amounting to a contract. See id.; Polo
Fashions, Inc. v. Fashion Assocs., Inc., 4 Fed.R.Serv.3d
(Callaghan) 456, 1986 WL 1176 (S.D.N.Y. 1986). Plaintiff
asserts that its customers may have received mailings for the
allegedly infringing Jet Pots and, because such pots were
defective, Sutton may have lost "repeat sales." Sutton Aff. ¶¶
22-23. Material issues of fact exist as to whether Starcrest
unjustifiably interfered with Sutton's relationships with its
customers. See Ryan v. Brooklyn Eye and Ear Hosp., 46 A.D.2d 87,
360 N.Y.S.2d 912, 917 (App. Div. 1974). Accordingly,
defendant's motion for summary judgment dismissing Count 3 is
The discovery cutoff in this action is May 1, 1991. The final
pretrial conference is scheduled for Friday, May 10, 1991 at
9:00 a.m. in courtroom 302.
IT IS SO ORDERED.