appropriation." Gaste, 863 F.2d at 1068; Lipton, 71 F.3d at 471. The similarity must also be so striking as to preclude the possibility of independent creation. Lipton, 71 F.3d at 471.
i. Mega Dot
The Court finds the Mega Dot fabric design and the infringing design are strikingly similar. The infringing design has the same irregularly shaped polka dots, the same semi-circle white crescent of shading around each dot, the same arrangement of the dots in an irregular and conflicting diagonals lines, the same color polka dots and the same blue background. Defendants argue that if placed on top of each other, the designs would not match up and therefore the two designs are not strikingly similar. Courts have found that two fabric designs do not have to be identical to be strikingly similar. "To be sure, no two pieces of the quilt are identical, in either design or dimension. However the way that the pieces of the quilt are positioned, their approximate dimension, their colors and color schemes are strikingly similar. The two fabrics have the same aesthetic appeal." Cranston, 1990 U.S. Dist. LEXIS 3062 at *6, 1990 WL 33580 at *2; see also Greeff Fabrics, Inc. v. Spectrum Fabrics Corp., 217 U.S.P.Q. (BNA) 498 (S.D.N.Y. 1981). Here, the dots themselves and their arrangement are strikingly similar. The color scheme although not identical is only slightly different in degree of shading.
Accordingly, the Court finds that the designs are strikingly similar and Defendants infringed the Plaintiff's copyrighted work "Mega Dot."
ii. Stars and Clouds
The allegedly infringing design of the "Stars and Clouds" design is not strikingly similar to the copyrighted design due to the darker shade of the predominant colors in the infringing design.
2. Substantially Similar
Alternatively to striking similarity, Plaintiff may show an inference of copying through substantial similarity of the two works and access on the part of Defendants to the work. Odegard, Inc. v. Costikyan Classic Carpets, Inc., 963 F. Supp. 1328, 1997 U.S. Dist. LEXIS 6406, 1997 WL 240553 (S.D.N.Y. 1997); In Design, 689 F. Supp. 176.
The test for substantial similarity is whether "the ordinary observer, unless he is set out to detect 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); Beeba's Creations, Inc. v. Details Sportswear, Inc., 1994 U.S. Dist. LEXIS 8020 at *4, 1994 WL 268241, *2 (S.D.N.Y. 1994). This test has also been expressed as "whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Beeba's, 1994 U.S. Dist. LEXIS 8020 at *4, 1994 WL 268241, *1; Davidov v. Tapemeasure Enters. Inc., 1993 U.S. Dist. LEXIS 3529, 1993 WL 88234 (S.D.N.Y. 1993). "If from a distance of 'five to ten feet' the ordinary observer would conclude the garments differed, no infringement has occurred. Furthermore, certain factors are to be given consideration in determining similarity, including (1) size of the elements, (2) pattern, (3) color and (4) repetition." Beeba, 1994 U.S. Dist. LEXIS 8020 at *5, 1994 WL 268241, at *2.
The Court finds the infringing design and the copyrighted Stars and Clouds design are substantially similar. The star and cloud pattern in the two designs have the same cartoon-like motif and style, the arrangement and spacing of the stars and clouds in relation to each other is the same, the color scheme is similar, although that of the infringing design has starker shading. Viewing the two designs side by side, an observer is hard pressed to perceive them any other way than coming from the same outside source. In short, the over-all "look and feel" of the two works are the same. Knitwaves, 71 F.3d at 1003 (infringing design had same "total concept and feel"); Gund, Inc. v. Russ Berrie and Co., 701 F. Supp. 1013 (S.D.N.Y 1988). The differences are so insubstantial, that while they ensure that the works are not identical, they do not negate that the designs are substantially similar.
Hence, the two designs are substantially similar.
In order to establish infringement Plaintiff must also prove Defendants had access to the work. However, based on the parties' submissions, a genuine issue of material fact as to Defendants' access to the copyrighted work exists. "Plaintiff bears the burden of producing "significant, affirmative, and probative evidence" to demonstrate that defendant had access to its claimed work." Beeba's, 1994 U.S. Dist. LEXIS 8020 at *7, 1994 WL 268241, *2. Plaintiff has failed to come forward with evidence sufficient to meet its burden. Accordingly, although the Court finds the designs to be substantially similar, summary judgment in favor of the Plaintiff cannot be granted regarding the "Stars and Clouds" design.
Finally, Defendants claim that they innocently infringed the copyright and therefore are not liable. "As a matter of law, 'innocent infringement' or copying from a third source wrongfully copied from the plaintiff, without knowledge that the third source was infringing does not absolve a defendant of liability for copyright infringement." Lipton, 71 F.3d at 470.
Although Plaintiff requested damages pursuant to 17 U.S.C. § 504(c)(2), which states there must be willful infringement in order to obtain the statutory relief of up to $ 100,000.00, see Textile Innovations, 1992 U.S. Dist. LEXIS 7695, 1992 WL 125525, it does not address the issue or bring any evidence to the Court's attention to support a finding of wilful infringement. Plaintiffs also present no evidence of actual damages. Accordingly genuine issues of material fact remain, and an award of damages cannot be made on this record.
The Court finds that the infringing design is strikingly similar to the Mega Dot design and thus Defendants have infringed it. The allegedly infringing design is substantially similar to the Stars and Clouds design, but Plaintiff has not shown access. Plaintiff's request for summary judgment in all other respects is DENIED.
On the remaining issues, the parties shall submit Memoranda of Law no later than August 15, 1997. On that day the parties' Findings of Fact and Conclusions of Law shall be filed. On September 5, 1997, the parties shall submit their Joint Pre-Trial Order.
Dated: New York, New York
June 27, 1997
Deborah A. Batts