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September 20, 1995

MULBERRY THAI SILKS, INC., Plaintiff, against K & K NECKWEAR, INC., Defendant.

The opinion of the court was delivered by: LEWIS A. KAPLAN

 LEWIS A. KAPLAN, District Judge.

 This action is the result of defendant's decision to produce "knock offs" of neckties designed and manufactured by the plaintiff. Although the economic stakes appear limited, the case presents an interesting question concerning the interface between the law of copyright and of trade dress and unfair competition. This is the Court's decision following a bench trial of the liability issues on a stipulated record.


 Plaintiff Mulberry Thai Silks, Inc. ("Mulberry") designs, manufactures and markets neckties. Unlike many other tie manufacturers, it has in-house designers who create all of the fabric designs that it employs. The designs then are printed at its direction at outside textile printers in color combinations, also known as colorways, specified by Mulberry. This case involves seven fabric designs known as Delauney, Descent, Egypt, Lineage, Maya, Nexus and Sunrise, all of which were created by Mulberry's design team in 1993 and all of which were part of Mulberry's spring 1994 Ziggurat tie collection. The collection was widely shown to the trade and the public beginning in the fall of 1993 and continuing through the spring of 1994. Mulberry began shipping to its retail store customers, and the ties went on sale at stores including Macy's, Bloomingdale's and A&S, in January 1994.

 In or about March 1994, the divisional merchandise manager and buyer at NBO, a large discount retailer, suggested to defendant K & K Neckwear, Inc. ("K & K") that K & K produce a collection similar to Mulberry's Ziggurat collection. K & K then designed a collection that sought to come as close to the line as possible without crossing over into the realm of illegal copying.

 In August 1994, Mulberry learned that ties made of fabrics apparently copied from Mulberry's designs were on sale at A & S and NBO. It purchased some of the allegedly infringing ties on August 19, 1994 and traced them back to K & K. On August 29, 1994, it obtained copyright registrations for the seven designs here at issue and, two days later, served notice of infringement on K & K and demanded that it cease and desist from marketing the copies. On September 6, 1994, K & K, without admission of liability, advised Mulberry that it had stopped making and marketing the designs in question. In subsequent discussions between the parties, K & K offered to pay Mulberry the net profit it had earned through sales of the designs at issue, but this was unsatisfactory to Mulberry.

 Plaintiff commenced this action on October 13, 1994. It pleads three causes of action: copyright infringement, violation of the Lanham Act, and unfair competition. It seeks a permanent injunction, an accounting of K & K's profits, treble damages and attorneys fees, among other relief.


 The Copyright Infringement Claim

 In order to establish copyright infringement, the plaintiff must show ownership of a valid copyright and unauthorized copying by the defendant of original constituent elements of the work. Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991). Mulberry's copyright registrations are prima facie evidence of ownership and validity. 17 U.S.C. § 401(c). Copying may be established by proof of access and substantial similarity. E.g., Weissmann v. Freeman, 868 F.2d 1313, 1320 (2d Cir.), cert. denied, 493 U.S. 883, 107 L. Ed. 2d 172, 110 S. Ct. 219 (1989). The test of substantial similarity, in Judge Learned Hand's classic statement, is "whether the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them and regard their aesthetic appeal as the same." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).

 Here, K & K's access is undisputed. The allegedly infringing designs admittedly were the result of NBO's suggestion that K & K produce something similar to Mulberry's products. The Court finds also that the K & K designs are substantially similar to Mulberry's. The parties have submitted seven color photographs, each depicting a Mulberry tie side by side with K & K's corresponding copy. (Jacobson Decl. Exs. 3-9) While careful study reveals subtle differences -- e.g., curved lines changed to straight lines and vice versa -- the Court finds that the overall impression created by K & K's ties is confusingly similar to that created by Mulberry's products. Put another way, the Court finds that the aesthetic appeal of both products is substantially the same. A tie buyer who had seen one of Mulberry's Ziggurat collection ties and wished subsequently to buy the same tie would be likely, upon seeing K & K's copy, to buy it in the mistaken belief that the buyer was purchasing the same tie that the buyer had seen previously -- and vice versa. Indeed, defendant's only response to the copyright infringement claim is the assertion that Mulberry's designs are not copyrightable.

 The basis of K & K's position is the assertion that Mulberry's collection simply reflects geometric elements that are common in the trade. In substance, then, defendant contests the validity of Mulberry's copyrights.

 To be sure, copyright may subsist only in "original works of authorship." 17 U.S.C. § 102(a). But Mulberry's certificates of registration are prima facie evidence of validity and, therefore, of originality. The burden therefore is on the defendant to prove that the plaintiff's designs were not original. E.g., Masquerade Novelty, Inc. v. Unique Industries, Inc., 912 F.2d 663, 669 (3d Cir. 1990); 3 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT (hereinafter NIMMER) § 12.11[B][1] (1995). Moreover, "the originality needed to support a copyright merely calls for independent creation, not novelty" -- it requires only that the copyrighted work not have been copied. 1 NIMMER § 2.01[A]. To quote Judge Hand again, "If by some magic a man who had never known it were to compose Keats' Ode On a Grecian Urn, he would be an 'author,' and, if he copyrighted ...

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