The opinion of the court was delivered by: Owen, District Judge.
This is one of a number of actions for copyright infringement
of a certain fabric design, all of which are before me. Pursuant
to Fed.R.Civ.P. 56, defendant Sears, Roebuck and Co. now moves
for summary judgment on the grounds that plaintiff Queenie, Ltd.
cannot establish copying of any protectible element or elements
of the aforementioned fabric design. For the reasons set forth
below, defendant's motion is granted.
In 1990, Timney-Fowler Design Studio in London created a design
known as TF 7459. In 1991, Timney-Fowler sold the design
designated as TF 7459, including copyright, to Equipment, a
French apparel manufacturing company with offices in Paris. In
July 1995, Queenie purchased a design designated as TF 7459,
including copyright, from Equipment. Queenie then registered a
design designated as "TF 7459 (Box Design)" with the Copyright
Office on August 10, 1995.*fn1
Since approximately 1995, Queenie has been manufacturing and
distributing ladies' blouses which display the tile print design
registered with the Copyright Office. Queenie claims that Sears
infringed on its copyright by manufacturing and selling
blouses bearing a tile print pattern.*fn2 Black and white copies
of the disputed designs, somewhat reduced in size, are in
Appendices A and B hereto.
Summary judgment is appropriate only when there is no genuine
issue of material fact remaining for trial and the moving party
is entitled to judgment as a matter of law. See Fed.R.Civ.P.
56(e); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-248,
106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party bears the
burden of showing that no genuine factual dispute exists and all
ambiguities and inferences drawn from the underlying facts must
be resolved in favor of the non-moving party. See LaFond v. Gen.
Physics Servs. Corp., 50 F.3d 165, 171 (2d Cir. 1995). "Rule
56(e) mandates the entry of summary judgment . . . against a
party who fails to make a showing sufficient to establish an
element essential to that party's case, and on which that party
will bear the burden of proof at trial." Celotex Corp. v.
Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265
To establish copyright infringement, Queenie must demonstrate
that (1) Sears has actually copied Queenie's work and that (2)
the copying is illegal because a substantial similarity exists
between the Sears design and the protectible elements of
Queenie's tile print. See Feist Publications, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358
(1991); Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002
(2d Cir. 1995). Sears does not dispute the validity of Queenie's
copyright for the purposes of this motion. Defendant's motion,
moreover, does not focus on the first prong of the infringement
test; thus, essentially leaving undisputed whether Sears had
access to the copyrighted design and, further, whether the
similarities between Queenie's tile print and the Sears design
are probative of copying. Rather, Sears assumes the first and
concentrates on the second prong of the infringement query,
asserting that its garments are not "substantially similar" to
Before turning to the "substantially similar" inquiry, it
should be noted that the scope of Queenie's copyright is narrow.
Queenie's tile print incorporates items and shapes which have
been in the public domain for centuries. Specifically, boxes,
both regular and irregular, staggered or straight, as well as
rips and tears, do not automatically come within copyright law's
umbrella of protection. One cannot simply copyright the idea of
arranging boxes and tears. Only the expression of that idea can
receive copyright protection.*fn3 See Mattel, Inc. v.
Azrak-Hamway Int'l. Inc., 724 F.2d 357, 360 (2d Cir. 1983).
"[T]he plaintiff must show that the defendant appropriated the
plaintiff's particular means of expressing an idea, not merely
that he expressed the same idea. The means of expression are the
artistic aspects of the work; the mechanical or utilitarian
features are not protectible." Fisher-Price, Inc. v. Well-Made
Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir. 1994).
As observed in previous related decisions,*fn4 the test for
is whether "the ordinary observer, unless he 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). Where, as here,
the design contains both protectible and unprotectible elements,
the inspection must be "more discerning" — the court "must
attempt to extract the unprotectible elements . . . from
consideration and ask whether the protectible elements, standing
alone, are substantially similar." See Knitwaves, 71 F.3d at
1002. Finally, I must examine the "total concept and feel" of the
two designs in determining whether the Sears design infringes
upon Queenie's copyright. Id. at 1003 (quoting Eden Toys, Inc.
v. Marshall Field & Co., 675 F.2d 498, 500 (2d Cir. 1982))
(internal quotes omitted).
In this case, it is difficult to extract which particular
elements of the Queenie garment are protectible and which are
unprotectible.*fn5 For example, is it placement of a pink square
next to a mauve square? A smeared green square with an edge
touching an orange square? Certainly the entire body of copyright
law does not revolve around such refined and impossible
distinctions. Common sense would instruct, therefore, that it is
only the particular expression of the Queenie garment — that is,
the exact expression resulting from the arrangement, colors,
textures, rips, etc. — that can be protected by the copyright
law. In other words, infringement would result only from a
garment virtually identical to Queenie's but featuring a
different label. In that case, a rose by another name would still
be a rose. The state of the law accords with this common sense
conclusion. This Court has noted that, "one cannot copyright a
box or a rip." Queenie, Ltd. v. Notations, Inc. et al., 1999 WL
1044368, at *5 (S.D.N.Y. Nov.18, 1999). To the extent that works
are similar in ideas and general concepts, those similarities are
not infringements. See Rachel v. Banana Republic, Inc.,
831 F.2d 1503, 1507 (9th Cir. 1987). Furthermore, similarity in
expression is non-infringing when the nature of the creation
makes such similarity necessary. See Past Pluto Prods. Corp. v.
Dana, 627 F. Supp. 1435, 1444 (S.D.N.Y. 1986). This
"indispensable copying" is infringing only if the works are
virtually identical.*fn6 See Ring v. Estee Lauder, Inc.,
874 F.2d 109-110 (2d Cir. 1989); Deering Milliken, Inc. v. Quaker
Fabric Corp., 187 U.S.P.Q. 288, 290 (S.D.N.Y. 1975); see also
Melville B. Nimmer & David Nimmer, Nimmer on Copyright, §
13.03[B][b] ("[I]f the only original aspect of a work lies in
its literal expression, then only a very close similarity,
verging on the identical, will suffice to constitute an
Queenie and Sears provided the Court with the actual garments
at oral argument. Having examined both garments and considered
the arguments of counsel, I conclude that the two garments are
similar in ideas and general concepts. Both garments incorporate
multi-colored squares posited against dark backgrounds. The edges
of the squares on both garments appear torn, wrinkled or ripped.
Although the squares are somewhat closer together on the Queenie
garment, both garments feature a checkerboard layout. The
garments also share, in some areas, similar texture and shading
treatments which distort the colors contained within the squares.
However, while color differences standing alone are not
controlling criteria, here, the entire pallette of the Queenie
garment, and TF 7459 (Box Design), is significantly lighter than
the Sears design. The interaction between light colors
on a dark background gives the viewer a substantially different
feel than the interplay between dark colors against a dark
background. Thus, I can and do consider color aspects as one
factor to be considered in determining infringement. See
Knitwaves, 71 F.3d at 1004-1005 (considering color and citing
Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090,
1093 (2d Cir. 1977)). Examining the rips, tears and contours
between the squares, I note that many of these features are
different. In certain spots, the Queenie garment's tears are
pronounced and bulging while the Sears edges appear more uniform
and consistent. Finally, the size of the boxes utilized in both
garments is different and the Sears design is clearly not a
minimized reproduction of the Queenie design. The edge of a
Queenie square, in most areas, is approximately one inch longer
than the edge of a Sears square. See Eden Toys, Inc. v. Marshall
Field & Co., 675 F.2d 498, 500 (2d Cir. 1982) (considering
specific size of the elements contained in snowman design);
Beeba's Creations, Inc. v. Details Sportswear, Inc., No. 92
Civ. 6611, 1994 WL 268241, at *2 (S.D.N.Y. June 15, 1994)
(holding size of the elements a factor to be considered in
assessing substantial similarity).
There is one final issue to be addressed arising from the
following. Queenie's counsel presented some evidence that Sears
had unlawfully appropriated TF 7459 on a prior occasion. Counsel
represented that Sears and Queenie settled a prior suit and
provided the Court with two garments bearing a virtually
identical color scheme and the disputed tiled design. Although
the terms of the settlement and the underlying facts of the
previous dispute are not before this Court, an inference may be
drawn on this summary judgment motion that Sears was chargeable
with knowledge of Queenie's design. Put simply, drawing an
inference in Queenie's favor, as I must, it is unlikely that the
Sears design was created without knowledge of Queenie's garment.
Queenie contends that Sears has continually worked off the tile
print and attempted to avoid infringement by making slight
changes to the original design.*fn7 Assuming Queenie's proffered
facts, the question is whether Sears altered the design enough so
that its garments are not substantially similar to Queenie's. As
the Court of Appeals noted, "[W]hile no plagirist can excuse the
wrong by showing how much of his work he did not pirate, a
defendant may legitimately avoid infringement by intentionally
making sufficient changes in a work which would otherwise be
regarded as substantially similar to that of the plaintiffs."
Knitwaves, 71 F.3d at 1002. Such is the case here for the
reasons detailed earlier. Even assuming the defendant simply made
a "knock-off" of the Queenie design, the Sears garment altered
the palette of colors, the fabric, the size of the boxes and the
appearance of the tears and rips. Such alterations preclude a
finding of substantial similarity.
Although the issue of substantial similarity is a factual one,
summary judgment is appropriate based upon my review of the
record and conclusion ". . . that as a matter of law a trier of
fact would not be permitted to find substantial similarity." See
Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 918 (2d Cir.
Accordingly, defendant's motion for summary ...