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February 17, 1998


The opinion of the court was delivered by: OWEN

 OWEN, District Judge

 Both parties here are producers of such thematically-decorated picture frames and business card holders. Plaintiff, Ann Howard Designs, L.P. ("Howard"), a New York corporation, sues defendant, Southern Frills, Inc. ("Southern"), a Texas corporation, seeking both an injunction and damages under the Copyright Act, 17 U.S.C. § 101 et seq., and section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as well as asserting state law claims under N.Y. Gen. Bus. Law §§ 349-50 and unfair competition. *fn1" Southern responds to Howard's claims with its own Lanham Act claims, as well as numerous state law claims. *fn2" This memorandum, however, addresses Southern's motion for summary judgment under Fed. R. Civ. P. 56 on Howard's Copyright and Lanham Act claims and Howard's cross-motion for the same as to all of Southern's counterclaims.

 Neither party was the first to produce the items that they sell. For instance, in 1989, one Martyne Rubin began nationally marketing similar decorative picture frames using jigsaw puzzle pieces around the rectangle with little miniatures on them. Her particular arrangements received press attention in various contexts. Indeed, it is on this record that, in 1990, Howard's president, Ms. Shari Ann Midler, received one of Ms. Rubin's frames as a gift, which--according to Ms. Midler--served as inspiration for Howard's eventual line of frames. *fn3"

 Southern entered the market in 1990, at that time producing and selling, among other things, metal picture frames decorated with miniatures and rhinestones. *fn4" Howard thereafter entered the market in September 1992, putting out a line of picture frames as well. Howard's frames are decorated with jigsaw puzzle pieces and miniatures, arranged thematically along the border. Certain of its arrangements have been registered with the Copyright Office as of 1994. In 1995, Southern altered its frame line, switching from metal to less expensive acrylic frames and to puzzle pieces rather than the pricier rhinestones of its previous line. Howard claims that, by doing so, Southern "knocked off" Howard's line, violating Howard's copyright and trade dress rights. Southern, in turn, claims, among other things, that Howard's line violated Southern's pre-existing trade dress rights.

 Summary judgment can only be granted if I find that "there is no genuine issue as to any material fact" such that either party is entitled to judgment as a matter of law. Williams v. Crichton, 84 F.3d 581, 587 (2d Cir. 1996) (citing Fed. R. Civ. P. 56(c)). Thus, in regard to Howard's copyright claim, I must determine if there is a genuine issue regarding the validity of Howard's copyrights, and whether Southern has copied the constituent elements of Howard's frames that are original to Howard. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991). I conclude that summary judgment is appropriate here because, although Howard holds valid copyrights, it cannot be argued that the similarity between the parties' frames runs to the copyrightable elements of Howard's work. See Williams, 84 F.3d at 587.

 At the outset, one may not copyright an idea. It is the expression of an idea that receives copyright protection. See Mazer v. Stein, 347 U.S. 201, 98 L. Ed. 630, 74 S. Ct. 460 (1954); Mattel, Inc. v. Azrak-Hamway International, Inc., 724 F.2d 357, 360 (2d Cir. 1983). The concept of picture frames decorated with three-dimensional pieces--be they rhinestones, puzzle pieces or miniatures available from stock houses--is simply not copyrightable. Furthermore, although the Copyright Act does protect compilations, *fn5" that protection extends only to the elements of the work original to the compiler. *fn6" While Howard argues that Southern has "coopted Ann Howard's creative choice" by getting into the marketplace and using some pieces that Howard had already bought and used, Howard holds no proprietary right to the choice of rhinestones, puzzle pieces, miniatures or acrylic frames because it did not design any of those individual elements. Thus, in order for Howard to survive summary judgement, it needed to show facts that could reasonably establish both Southern's access to Howard's frames *fn7" and marketing of frames that are substantially similar to Howard's exact layouts. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995). *fn8"

 As indicated at the outset, the parties' frames are similar. For example, when comparing Howard's "Come Sail Away" frame with Southern's frame of like theme, I see two frames that, while of different size and perspective, are bordered with puzzle pieces, each using, among other miniatures, identical ship wheels, ships and sailor's hats obviously from the same vendor. The result is a substantial similarity that, using the term in the legal context, does not give way until one takes a closer look, *fn9" the question being is their similarity due to copyright infringement or to the nature of the industry from which both parties profit. I conclude that the latter controls, and there is no genuine issue that Howard's copyrights have been infringed. As such, Southern's motion for summary judgement on Howard's copyright claim is granted. *fn10"

  Both parties have made challenged claims under the Lanham Act Section 43(a), 15 U.S.C. § 1125(a). *fn11" That section protects trade dress, a term encompassing a product's "composition, design, including size, shape, color, texture and graphics." Mana Products, Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1068 (2d Cir. 1995). Much for the same reasons that Howard cannot prevail on its copyright claim, both parties fail to establish viable trade dress claims.

 Although I have noted that the parties' frames can be confusingly similar because of their elements, the parties' labelling and the nature of the market involved negate any trade dress claim. Each needed to establish an issue of fact suggesting that their frames are either "inherently distinctive" or have acquired secondary meaning in their market and that there is likelihood of confusion among Howard's customers. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S. Ct. 2753, 2758, 120 L. Ed. 2d 615 (1992). But, even if either party could establish inherent distinctiveness or secondary meaning which is doubtful on this record, it is clear that neither can establish a true likelihood of confusion exists between the Howard and Southern frames.

 The Lanham Act does not reach all product similarity. Any general similarity between the parties' frames is irrelevant, except to the extent that it confuses consumers as to the origin of the frames. See Grupke v. Linda Lori Sportswear, Inc., 921 F. Supp. 987, 997-998 (E.D.N.Y. 1996). Moreover, in this Circuit, trade dress protection extends only to those designs that are "'likely to serve primarily as a designator of origin of the product.'" Knitwaves, Inc., 71 F.3d at 1008 (emphasis added). *fn12" Here, there is only insubstantial evidence showing that their names are linked to any particular design. *fn13" In addition, all of Howard's frames have a felt backing, with inserts carrying their thematic title and Howard's name, along with copyright notice and the legend "Made in the U.S.A.". Southern's frames have no backing and are only sporadically titled, but are marked clearly with the words "Handcrafted by Southern Frills, Inc." and "Designed by Patti Strauss". Thus, while nothing on record even facially establishes that each parties' identity is linked to the composition of its frames, it is clear that their arguable single origin, flowing from non-protectible elements, is negated by the explicit differentiating labelling appearing on each parties' frames. *fn14"

 Additionally, both parties can claim the functionality defense. This defense arises when design choices "reflect cost and quality considerations" or when trade dress protection would "impinge upon rights of others to compete effectively in sale of goods." Stormy Clime Ltd. v. Progroup, Inc., 809 F.2d 971, 975, 977 (2d Cir. 1987). See also, Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 131 L. Ed. 2d 248, 115 S. Ct. 1300 (1995) ("[A] product feature is functional . . . if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.") Both parties allude to cost considerations in their choice of puzzle pieces and rhinestones, as well as particular miniatures, *fn15" and--as noted in the first instance--to allow either party a proprietary right in the objects used on their frames would obviously have severe and inappropriate impact on the market of independent third-party vendors of the objects.

 On this record, therefore, both parties' Lanham Act claims fall to summary judgement. *fn16 ...

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