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
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 ...