The opinion of the court was delivered by: Robert W. Sweet, United States District Judge
This action involves a claim of copyright infringement arising under
the United States Copyright Act of 1976, 17 U.S.C. § 101 et seq., and
for related claims of injury to business reputation and unfair
competition. Defendant P.F.C. Converting, Inc. ("PFC") has
counterclaimed, alleging that two letters sent by plaintiff P. Kaufmann,
Inc. ("Kaufmann") to retailers were harmful to its business. Kaufmann has
submitted a motion pursuant to Federal Rule of Civil Procedure 12(b)(6)
to dismiss PFC's counterclaims on the grounds that they fail to state a
cause of action.
For the following reasons, the first counterclaim is dismissed and the
second counterclaim is dismissed in part, with leave to amend.
Kaufmann is a corporation duly organized and existing under the law of
the State of New York. It has been involved in the design and sale of
home furnishing fabrics for more than forty years.
PFC is a corporation organized and existing under the laws of the State
of Georgia. PFC is a textile converter and marketer of upholstery
fabrics. PFC performs its marketing through the trade name Magnolia Home
PFC manufactures and sells an upholstery fabric called Sheridan (the
"Sheridan design"). Kaufmann manufactures and sells an upholstery fabric
called Queensland (the "Queensland design"). The underlying lawsuit filed
by Kaufmann alleges that the Sheridan design infringes on the Queensland
On April 4, 2001, Kaufmann, through its legal counsel, wrote a letter
to defendant Americraft Fabrics, Inc. ("Americraft") alleging that PFC's
Sheridan design "mimics and copies" Kaufmann's Queensland design.
Americraft forwarded the letter to PFC.
On April 10, 2001, PFC responded to the letter. It stated that it was
the appropriate addressee of the April 4, 2001 letter, and pointed out to
Kaufmann various distinguishing differences between the two designs. It
The Sheridan design has what is referred to in the
art as a five star floral pattern on each of the
four corners of a square and one floral pattern
centered in the square while Queensland pattern has
a different layout which is referred to in the art
as a 27 inch, half-drop repeat, side by side. The
Queensland design has two large peaches at the
bottom of each of its flowers while the Sheridan
design has no peaches. The Queensland design has a
grouping of cherries overlapping the Queensland's
peaches, while the Sheridan design has no cherries
or peaches. The Queensland design utilizes large
green leaves, while the Sheridan design has small
green leaves. The Queensland design utilizes grapes
that are all blue in color, while approximately
fifty percent of the grapes the Sheridan design
utilizes are gray in color. The Queensland design
utilizes fifteen screens in its manufacture, while
the Sheridan design utilizes only twelve screens.
Kaufmann did not respond to PFC's April 10, 2001 letter.
Over the ensuing months, PFC continued to print fabric using the
Sheridan design and to acquire new customers for the Sheridan design.
In June 2001, PFC established a relationship with Corinthian, Inc.
("Corinthian"), in Corinth, Mississippi, a company partially owned by
Rooms-To-Go, Inc. ("Rooms-To-Go"), to furnish the Sheridan design for use
in manufacturing upholstered furniture for Rooms-To-Go.
On September 13, 2001, Kaufmann wrote a letter to Rooms-To-Go, in
Seffner, Florida. The letter included a copy of Kaufmann's Queensland
design copyright and stated that the Sheridan design "mimics and copies
P. Kaufmann's Queensland design" and "clearly appears to have been copied
to make a fabric under the name Sheridan that is incorporated in your
furniture." The letter also stated that Rooms-To-Go switched from the
Queensland design to the Sheridan design to "switch to a cheaper fabric
incorporating a substantially similar design from a different
supplier."*fn2 The letter also demanded that Rooms-To-Go immediately ...