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April 23, 1991


The opinion of the court was delivered by: Robert P. Patterson, Jr., District Judge.


This is an action alleging copyright, trademark, trade dress and design patent infringement and various common law violations. Defendant Starcrest of California ("Starcrest") moves for summary judgment on all counts pursuant to Rule 56 of the Federal Rules of Civil Procedure. For the reasons set forth below, defendant's motion is denied in its entirety.


Starcrest is a California corporation conducting business solely as a mail order company with no retail stores or outlets. Plaintiff Sutton Import-Export Corporation ("Sutton" or "SIE") has been one of Starcrest's suppliers since 1982 under a "Vendor Merchandise Agreement." Hartless Aff. ¶ 3 & Exh. A. In May 1988 Sutton began supplying Starcrest with a "Travel Hot Pot" at a cost of $9.25 apiece Id. ¶ 4 & Exh. B.

The Travel Hot Pot is a slim, rectangular, lightweight, plastic product approximately ten inches tall having a retractable handle and capable of fitting conveniently in a suitcase. Sutton is the assignee of U.S. Design Patent No. D294,447 issued March 1, 1988 which lists John Kao of Taipei, Taiwan as the inventor. The application date for the patent was July 10, 1985. Complaint, Exh. C. In addition, Sutton is the owner of U.S. Copyright Registration No. VA 390-706 issued April 9, 1990 for a work consisting of the text and photographs appearing on the cardboard packaging of the Travel Hot Pot.*fn1 Id., Exh. J. Isaac Sutton, Vice President of Sutton Import-Export, claims he drafted the copyrighted text and gave Kao specific instructions for taking the photographs over which he exercised final approval. Sutton Aff. ¶¶ 12-13.

In December 1988 Sutton began making late deliveries of Travel Hot Pots and Starcrest complained in writing. Hartless Aff., Exh C & D. In May 1989, because Sutton had not filled outstanding back orders for 1301 Travel Hot Pots from February and March 1989, Starcrest purchased 1200 hot pots from North American Phillips, not a party in this action, at a cost of $14.57 each. Id. ¶¶ 8, 10. Thereafter, Sutton purchased approximately 5700 products called "Jet Pots" from defendant Intermarket Corporation ("Intermarket") for $10.50 each. Sutton Aff ¶ 9; Hartless Aff., Exh. F. The Jet Pots supplied by Intermarket, which were identical in shape and design to Sutton's Travel Hot Pots, were packaged in a box appearing similar to Sutton's copyrighted box. Hartless Aff. ¶ 15. The Jet Pot packages bore the unauthorized notice "(c) 1985 SIE Products" and contained warranty cards appearing to have been issued by Sutton.*fn2 Id. Finally, the Jet Pots bore plaintiff's SIE trademark and plaintiff's Underwriters Laboratory ("UL") number. Id.

Plaintiff filed its complaint in this action on June 13, 1990. The Court heard oral argument on defendant's motion for summary judgment on April 18 at which time the Court granted defendant leave to file a counterclaim for breach of contract on condition that defendant withdraw the contract action currently pending against Sutton in municipal court in California.


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 ...

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