in Hong Kong to give the box to a Mr. Chiu of Flying Colors Design, in order to design the box for the Casuals product. Tr. at 67, 79-80. C.C.A. had had 70 to 80 previous boxes designed by Chiu. Tr. at 80. Lam told Chiu to copy only the size of Tienshan's box, and that he could use the same words that were used on Tienshan's box to describe the contents of C.C.A.'s box and the fact that the items were "dishwasher safe" and "microwave compatible." Tr. at 68, 81-82, 118. Lam testified that he specifically told Chiu not to copy anything else from Tienshan's box. Tr. at 67. After a trade show of dinnerware -- known as a "tabletop show" -- in New York City in November 1993, Lam also asked Chiu to design a logo for the Casuals box. Tr. at 88.
On December 9, 1993, not having heard from Chiu, Lam faxed a sketch of a proposed box design, which, he testified, he drew without using Tienshan's box as a guide. Tr. at 71-72, 82-83. Lam's sketch displayed a representative of each piece in the set. Tr. at 83. After Chiu informed Lam that such a design would greatly increase costs, Lam sent Chiu another sketch the following day. Tr. at 84. Both sketches included the words "Casuals" on the upper-left hand corner of the front panel of the box, but without a rectangle around the word. Several days later, Lam received from Chiu an initial sketch of the box design that Chiu had devised. Tr. at 69, 85. Lam found two flaws with this sketch: like the Tienshan box, it failed to show the small plate; and, also like the Tienshan box, it had a space for the Uniform Products Code ("U.P.C.") symbol on the bottom of the box, rather than on the side, as Lam desired. Tr. at 70, 72, 85-86. Lam informed Chiu of these "errors," whereupon Chiu completed a second sketch, which Lam approved later that month. Tr. at 70, 86. Besides correcting these two "errors," Chiu also included a rectangle around the word "Casuals" in the final sketch.
Tienshan's Awareness of C.C.A.'s Alleged Infringement and the Filing of this Action
Lam testified that he believed that the Casuals box had been seen at least twice by Jan Lin Chen, the Executive Vice President of Tienshan, prior to 1995. It was allegedly first seen during a housewares show in Chicago in January 1994, when Chen apparently visited Lam at the C.C.A. booth. Tr. 103-04. Because the Casuals box was placed somewhere behind Lam, he assumed that Chen noticed it. Tr. at 106, 107-08, 113. Chen, however, could not recall whether or not she visited the C.C.A. booth at that particular show, and could not recall seeing any C.C.A. boxes at that show. Tr. at 167, 169.
Chen also visited C.C.A.'s showroom in New York City during the "tabletop show" in November 1994. Tr. at 109, 110, 159-60. Lam believed that Chen saw the Casuals box at that time, given the prominent placement of C.C.A.'s display area. Tr. at 111. Chen, however, testified that she did not see the boxes, but only some bowls from C.C.A.'s Casuals set. Tr. at 161, 167-68. After seeing the bowls, she told Braunschweig about them. Tr. at 167. Chen's duties include being the Chief Financial Officer of Tienshan and its liaison to its Chinese suppliers. Tr. at 156. Her job does not involve the design of either the product or its packaging. Tr. at 157, 168.
Braunschweig first became aware of the Casuals box on April 10, 1995, when he saw it in a Bradlees store. Tr. at 28-29, 54. Ten days later, Tulino and Hogg executed a copyright assignment transferring all of their rights in the Kitchen Basics box design to Tienshan, and five days after that a Certificate of Registration of the Kitchen Basics box design was issued to Tienshan by the United States Copyright Office.
On May 3, 1995, Tienshan petitioned this Court for an Order to Show Cause why C.C.A. should not be temporarily restrained from using its Casuals box. The request for a Temporary Restraining Order was denied on May 5, 1995. Expedited discovery took place and an evidentiary hearing on Tienshan's motion for a preliminary injunction was held on June 2, 1995.
CONCLUSIONS OF LAW
As a threshold matter, C.C.A. argues that Tienshan should be prevented from obtaining equitable relief because Tienshan "slept on its rights." An inordinate and unexplained delay between the time Tienshan learned of C.C.A.'s alleged infringement and the time Tienshan filed the instant suit could indeed prevent it from obtaining the relief it now seeks. See, e.g., New Era Publications International v. Henry Holt and Co., Inc., 873 F.2d 576, 584 (2d Cir. 1989), cert. denied, 493 U.S. 1094, 110 S. Ct. 1168, 107 L. Ed. 2d 1071 (1990).
C.C.A. adduced evidence that an officer of Tienshan may have known about the C.C.A. box design as early as January 1994, approximately sixteen months before this action was brought. However, that evidence was inconclusive. Lam stated that Chen visited him on two occasions, once in January 1994 and once in November 1994, and that he thought that she saw the Casuals box on both occasions. However, Lam did not actually see Chen notice the Casuals box and could only assume that she saw it. For her part, Chen recalled visiting Lam in November 1994 but could not recall whether she visited him in January 1994. On neither occasion did she recall seeing the Casuals box. The inference that she did not in fact see it is strengthened by her testimony that she told Braunschweig about C.C.A.'s bowls -- not the box -- which she erroneously thought infringed rights held by Tienshan in the dinnerware itself, shortly after seeing them in November 1994.
Moreover, Chen's duties consist of being Tienshan's Chief Financial Officer and its liaison to its Chinese exporters. There is little reason to think that even if Chen cast a cursory glance at the box, she would have recognized its design as infringing the Kitchen Basics box design.
Braunschweig, on the other hand, as president of Tienshan, was more likely to be familiar with the various box designs for its products. He testified that he first became aware of the Casuals box design on April 10, 1995, and there was no evidence to the contrary. From that point, he moved swiftly, securing an assignment of rights from the designer of the Kitchen Basics box, acquiring a valid copyright on the packaging design, and instituting this action, all within approximately three weeks. For these reasons, the Court determines that Tienshan is not prevented by the doctrine of laches from obtaining equitable relief.
II. Standard for Obtaining a Preliminary Injunction
Tienshan seeks a preliminary injunction against C.C.A.'s alleged infringing activity pursuant to § 502(a) of the Copyright Act of 1976. 17 U.S.C. § 502(a). In order to obtain a preliminary injunction, Tienshan must "'establish possible irreparable injury and either (1) probable success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in [Tienshan's] favor.'" Consumers Union of U.S., Inc. v. General Signal Corp., 724 F.2d 1044, 1048 (2d Cir. 1983), cert. denied, 469 U.S. 823, 105 S. Ct. 100, 83 L. Ed. 2d 45 (1984) (quoting Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema Ltd., 604 F.2d 200, 206-07 (2d Cir. 1979)). See Fisher-Price, Inc. v. Well-Made Toy Manufacturing Corp., 25 F.3d 119, 122 (2d Cir. 1994). However, a showing of a prima facie case of copyright infringement raises a presumption of irreparable harm. See Wainwright Sec., Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 94 (2d Cir. 1977), cert. denied, 434 U.S. 1014, 98 S. Ct. 730, 54 L. Ed. 2d 759 (1978); Dynamic Solutions, Inc. v. Planning & Control, Inc., 646 F. Supp. 1329, 1337 (S.D.N.Y. 1986). To establish a prima facie case of infringement, the Supreme Court has held, "two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296, 113 L. Ed. 2d 358 (1991).
A. Ownership of a Valid Copyright
A copyright registration certificate, when issued within five years of publication of the work, constitutes prima facie evidence of ownership of a valid copyright. See 17 U.S.C. § 410(c). Tienshan has produced such a certificate. Moreover, where a putative copyright holder obtained an assignment of rights before registration, the registration certificate also provides prima facie evidence that the chain of title is intact. See Sygma Photo News, Inc. v. High Society Magazine, Inc., 778 F.2d 89, 92 (2d Cir. 1985). The burden is therefore on C.C.A. to rebut the presumption that Tienshan is the rightful owner of a valid copyright. See Gaste v. Kaiserman, 863 F.2d 1061, 1064 (2d cir. 1988). C.C.A. has not done so. Therefore, Tienshan has satisfied the Court that Tienshan owns a valid copyright in its box design.
B. Copying of Constituent Elements That Are Original
The remaining question -- whether C.C.A. copied constituent elements of Tienshan's box design that are original -- breaks down into two distinct issues. First, Tienshan must show that C.C.A., as a factual matter, physically copied its box design from Tienshan. See Fisher-Price, 25 F.3d at 122; Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 765 (2d Cir. 1991); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Second, assuming it is successful in that endeavor, Tienshan must further show that C.C.A. copied so much of the protectible elements of Tienshan's design that the copying was "illicit," i.e., it constituted "unlawful" or "improper" appropriation. Fisher-Price, 25 F.3d at 122-23, Folio Impressions, 937 F.2d at 765; Arnstein, 154 F.2d at 468.
1. Physical copying
The act of copying may be proven by either direct or circumstantial evidence. However, direct evidence of copying, for example an admission by the defendant or testimony of an eyewitness to the copying, is exceedingly rare. See 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01[B], at 13-10 to 13-12 (1994). Therefore, copying is often proven through circumstantial evidence consisting of (1) access by the defendant to the plaintiff's work, and (2) probative similarity
between the two works. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992). Here, C.C.A. conceded that it had access to Tienshan's work. Tr. at 181. Therefore, if the Court finds "similarities that, in the normal course of events, would not be expected to arise independently in the two works" and which therefore "are probative of [C.C.A.'s] having copied as a factual matter from [Tienshan's] work," it can infer that C.C.A. physically copied Tienshan's box design. See 3 Nimmer § 13.01[B], at 13-13. Moreover, given that access has been conceded, the level of probative similarity necessary to show physical copying is diminished. See Aldon Accessories Ltd. v. Spiegel, Inc., 738 F.2d 548, 553-54 (2d Cir.), cert. denied, 469 U.S. 982, 105 S. Ct. 387, 83 L. Ed. 2d 321 (1984); Steinberg v. Columbia Pictures Industries, Inc., 663 F. Supp. 706, 714 (S.D.N.Y. 1987).
In determining "probative similarity," the trier of fact may "dissect" the work to separate the similarities from the dissimilarities. See Arnstein, 154 F.2d at 468. It is also acceptable to consider both the protectible and unprotectible elements together rather than considering only the protectible elements, as the Court must do when determining "substantial similarity." See Fisher-Price, 25 F.3d at 123.
The Court finds the following similarities between the two works to be probative of copying by C.C.A.:
1. Each has a large dinner plate in the lower left corner of the front panel, wrapped around to the bottom and side panels.