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ODEGARD, INC. v. COSTIKYAN CLASSIC CARPETS

May 6, 1997

ODEGARD, INC. and STEPHANIE ODEGARD, Plaintiffs, against COSTIKYAN CLASSIC CARPETS, INC. and JSL INDUSTRIES, Defendants.


The opinion of the court was delivered by: KOELTL

 JOHN G. KOELTL, District Judge:

 The plaintiffs in this action, Odegard, Inc. and Stephanie Odegard, have sued the defendants, Costikyan Classic Carpets, Inc. ("Costikyan Carpets") and J.S.L. Industries ("JSL"), for copyright infringement, alleging that the defendants improperly copied three of their carpet designs. The defendants deny the plaintiffs' allegations and have counterclaimed, seeking a declaration that one of the plaintiffs' copyright registrations is invalid.

 This Court consolidated the hearing of the plaintiffs' application for a preliminary injunction with the trial on the merits. From March 3, 1997 to March 5, 1997, the parties tried this case to the Court in a non-jury trial. Pursuant to Federal Rule of Civil Procedure 52, the Court makes the following Findings of Fact and reaches the following Conclusions of Law.

 FINDINGS OF FACT:

 THE PARTIES

 1. Odegard, Inc. is a corporation organized under the laws of the State of New York. Its principal place of business is New York City. (Joint Pre-Trial Order Undisputed Facts ("UF") at P1). Odegard, Inc. is in the business of designing, importing and selling Tibetan carpets. (Trial Transcript ("Tr.") at 67 [Odegard]).

 2. Odegard is the president of Odegard, Inc. (UF at P2). She formed Odegard in 1989. (Tr. at 77-78 [Odegard]).

 3. Defendant Costikyan Carpets is a corporation organized and existing under the laws of the State of New York. Its principal place of business is located in Queens County, New York. (UF at P3). Costikyan Carpets was formed in 1993 to engage in the business of manufacturing, importing and selling handmade area rugs. (Tr. at 318-19 [Costikyan]). Phillip Costikyan is the president, sole director, and sole shareholder of Costikyan Carpets. (UF at P4).

 4. Defendant JSL is a corporation organized and existing under the laws of the State of New York. Its principal place of business is New York City. (UF at P5). JSL maintains a showroom at 969 Third Avenue in Manhattan. (Tr. at 211 [Braunstein]). JSL was formed in 1991 to manufacture custom carpets. (Tr. at 211-12 [Braunstein]). In 1994, JSL began manufacturing and selling Tibetan carpets. (Tr. at 214 [Braunstein]). Len Braunstein is the president, sole director and sole shareholder of JSL. (UF at P6).

 5. Costikyan Carpets and JSL have formed a partnership or joint venture. This joint venture manufactures and sells hand knotted Tibetan-style carpets under the name "Kent Collection." (UF at P7).

 THE COPYRIGHTS

 6. The plaintiffs allege that the defendants infringed upon their copyrights to their "Asterisk," "Chaklo," and "Belak Ripyun" carpet designs.

 7. Odegard, Inc. filed an application with the United States Copyright Office, dated January 23, 1997, for a Certificate of Registration for its "Asterisk" carpet design. (Plaintiffs' Exhibit ("PX") 16; Tr. at 169, 186). On March 14, 1997, after the completion of trial, the United States Copyright Office issued a Certificate of Registration for the "Asterisk" carpet design. (PX 46). That registration states that the application was received on January 31, 1997. (Id.). The parties stipulated to reopening the record to admit this Certificate of Registration into evidence. (March 21, 1997 Stipulation and Order).

 8. Odegard, Inc. is the owner of a copyright to its "Chaklo" carpet design pursuant to a Certificate of Registration issued effective as of May 24, 1995 by the United States Copyright Office. (PX 9).

 9. Odegard is the owner of a copyright to the "Belak Ripyun" carpet design pursuant to a Certificate of Registration, issued effective as of May 24, 1995 by the United States Copyright Office. (PX 3).

 THE PLAINTIFFS' CARPETS

 ASTERISK

 10. The "Asterisk" carpet design was created by the plaintiffs in cooperation with Holly Hunt, Ltd. ("Holly Hunt"), a Chicago-based design studio. Holly Hunt maintains a showroom in the D & D Building, which is located at 979 Third Avenue in Manhattan. In 1994, representatives of Holly Hunt visited the plaintiffs' showroom and agreed to design a line of silk and wool Tibetan carpets in collaboration with the plaintiffs. (Tr. at 23-24 [Levine]; Tr. at 103-04 [Odegard]).

 11. As part of this collaboration, Douglas Levine, at the time Holly Hunt's Director of Design, and Laura Kirar, Levine's assistant, began working on the design that would become the "Asterisk" carpet. During this design process, Levine and Kirar were primarily inspired by Japanese textiles. The two designers made a series of sketches, and began to develop a carpet design featuring an eight-pointed motif. (PX 19; Tr. at 27 [Levine]; Tr. at 49-50 [Kirar]). Levine testified at trial that the motif "wasn't really a star because it had no hard edge" but rather "free-flowing spots." (Tr. at 27 [Levine]).

 12. Levine and Kirar then experimented with designs featuring different sized eight-pointed figures, which they came to refer to as asterisks. (PX 19; Tr. at 27 [Levine]; Tr. at 50 [Kirar]). The designers also experimented with the placement of the motifs on the carpet. (Tr. at 36 [Levine]).

 13. The final product of this designing process was the plaintiffs' "Asterisk" carpet. This carpet features eight-point motifs. These motifs are relatively small and there is considerable space between each motif. The full size "Asterisk" carpet's border is less than an inch wide. (PX 17A, 17B).

 14. The defendants assert that the "Asterisk" design is not sufficiently original to be copyrightable. The defendants point out that Levine and Kirar both testified that asterisks are common symbols that have been used for centuries. (Tr. at 34 [Levine]; Tr. at 61 [Kirar]). The defendants also entered into evidence a number of textile patterns featuring eight-pointed figures. (Defendants' Exhibit ("DX") NN, OO, PP).

 15. However, the textile designs entered into evidence by the defendants all used precise and rigidly geometric eight-pointed figures. (DX NN, OO, PP). In contrast, the motifs on the plaintiffs' "Asterisk" carpet are less geometric or precise, and appear to have been drawn freehand. (PX 17A, 17B). Both Levine and Kirar testified that they consciously designed the eight-pointed figures to be less rigid than previous "star designs." (Tr. at 39 [Levine]; Tr. at 65 [Kirar]).

 CHAKLO

 16. The plaintiffs' "Chaklo" carpet was designed in 1994 by Odegard and Dawne Weaver, an artist employed by Odegard, Inc. The design was inspired by a customer's request for a custom carpet. The customer wanted a carpet with a design based on the shapes of wrought iron gates and railings. Weaver collected photographs of wrought iron pieces and made sketches based on those photos. These sketches became the "Chaklo" carpet design. (PX 12, 13; Tr. at 15-19 [Weaver]). During the trial, the defendants stipulated that the "Chaklo" carpet design was an original creation of the plaintiffs. (Tr. at 16).

 17. The "Chaklo" carpet is a symmetrical pattern. (PX 10; Tr. at 19 [Weaver]). It features linear motifs in shapes that resemble hearts, "S's," curlicues reminiscent of snail shells, and other shapes commonly found in wrought iron grillwork. The "Chaklo" carpet has a border that contains similar motifs. (PX 10).

 BELAK RIPYUN

 18. The plaintiffs produced their "Belak Ripyun" carpet design by modifying their "Belak" design, which had been created in 1990. "Belak" is the Tibetan word for "frog's foot." The "Belak Ripyun" carpet was designed in response to comments by the plaintiffs' customers that the "Belak" carpet design was too linear, and therefore gave too much of a "direction" to the room. The "Belak Ripyun" uses the same frog's foot motif as the "Belak," but the design is intended to draw the eye to the center of a room rather than in one particular direction. (Tr. at 89-90 [Odegard]).

 19. The "Belak Ripyun" carpet has frog's foot motifs that emanate from the center of the carpet. The motifs are triangular, with lines to represent a frog's toes. The carpet has a border with triangular patterns that resemble mountain peaks. In comparison to the "Asterisk" carpet, the motifs on the "Belak Ripyun" carpet are very close together. (PX 4).

 THE DEFENDANTS' CARPETS

 STAR CARPET

 20. The plaintiffs allege that the defendants' "Star" carpet design infringes on their "Asterisk" carpet design. The "Star" carpet was shown by the defendants at the 1997 carpet shows in Atlanta and Las Vegas. (Tr. at 190-92 [DeMarco]). The "Star" carpet design has many similarities to the plaintiffs' "Asterisk" carpet design. Both designs have free-form, rather than rigidly geometric or precise eight-point figures. Both carpets have considerable negative space between the motifs. Both carpets also have borders, although the "Star" carpet has a larger border than the "Asterisk" carpet. Moreover, the "Star" and "Asterisk" carpets have been produced using very similar color schemes. (PX 17A, 17B, 29).

 21. At trial, Braunstein asserted that he created the "Star" carpet independently, and that he had not seen the plaintiffs' "Asterisk" carpet at the time he created the "Star" carpet. Braunstein testified that in 1995 he gave a factory in Nepal instructions to create a carpet with a "star" design. (Tr. at 274 [Braunstein]). Braunstein further testified that in response to this request, he received samples from the factory in Nepal that featured various types of stars. (DX HH, II, JJ; Tr. at 261 [Braunstein]). However, the stars on these samples were different from the motifs on the final "Star" carpet. (DX HH, II, JJ; PX 29). The samples contained stars that were more geometric and precise looking than the free-form motifs that appear on the final "Star" carpet. (DX HH, II, JJ; PX 29).

 22. Braunstein's assertion that the "Star" carpet was independently created is not credible. Braunstein failed to explain the process by which the Tibetan carpet factory came to translate his cursory instructions into samples, some of which feature eight-pointed figures that somewhat resemble the plaintiffs' "Asterisk" carpet. Moreover, Braunstein failed to explain how these samples came to be modified so that they more closely resembled the free-form eight-pointed motifs found on the plaintiffs' "Asterisk" carpet.

 23. The defendants clearly had access to the plaintiffs' "Asterisk" carpet design. The "Asterisk" carpet has been displayed in the Holly Hunt showroom in New York since approximately March, 1996. (Tr. at 29-30 [Levine]). At trial, Braunstein testified that he had visited a designer's showroom that was located right next to the Holly Hunt showroom. (Tr. at 241 [Braunstein]). The "Asterisk" carpet was also shown at a July 1996 carpet show in Atlanta that ...


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