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United States District Court, S.D. New York

June 23, 2004.


The opinion of the court was delivered by: WILLIAM PAULEY, District Judge


Defendant Tufenkian Import/Export Ventures, Inc. and its owner, James Tufenkian (collectively "Defendants"), move to dismiss this copyright infringement action for failure to state a claim pursuant to Fed.R.Civ.P. 12(b)(6). Plaintiff David Shaw Nicholls, a rug designer, alleges that his copyrighted rug design "Prado" is being infringed by Defendants' "Eclipse" rug design.

The thrust of Defendants' motion is that the Amended Complaint should be dismissed "because the parties' works at issue lack actionable similarity as a matter of law." (Defendants' Memorandum of Law in Support of the Motion to Dismiss the First Amended Complaint ("Def. Mem.") at 1.) Specifically, Defendants argue that (i) the entirety of Plaintiff's "Prado" design is lacking in originality (Def. Mem. at 3-4; Defendant's Reply Memorandum of Law in Support of the Motion to Dismiss the First Amended Complaint ("Def. Reply") at 3-5), and (ii) the "Prado" and "Eclipse" designs are not substantially similar. (Def. Mem. at 5-7.)

  The "Prado" design, attached as Exhibit B to the Amended Complaint, comprises a rectangle with four and three quarter rows of four circles arranged in a grid. A portion of each circle is shaded a color different from the rest of the circle. (Amended Complaint ("Am. Compl.") Ex. B.) The "Eclipse" design, attached as Exhibit E to the Amended Complaint, comprises a rectangle with four rows of three somewhat circular-like shapes*fn1 arranged in a grid. Each circle has a portion of its top or bottom shaded a color different from the rest of the circle. Some of the circles are partially obscured by semi-transparent rectangles. (Am. Compl. Ex. E.)

  Plaintiff alleges that he created the "Prado" design in 1997 or 1998 (Am. Compl. ¶ 10), and registered his copyright on January 18, 2002. (Am. Compl. ¶ 11.) Plaintiff also claims he began selling the design in 1999 (Am. Compl. ¶ 13), and that it was featured in the New York Times in May 2000. (Am. Compl. ¶ 14.) Finally, Plaintiff alleges that Defendants sell "Eclipse" rugs that have a substantially similar design to its copyrighted "Prado" design. (Am. Compl. ¶ 21.) DISCUSSION

  On a motion to dismiss pursuant to Rule 12(b)(6), a court typically must accept the material facts alleged in the complaint as true and construe all reasonable inferences in a plaintiff's favor. Grandon v. Merrill Lynch & Co., 147 F.3d 184, 188 (2d Cir. 1998). A court should not dismiss a complaint for failure to state a claim unless "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46 (1957); accord Gant v. Wallingford Bd. of Educ., 69 F.3d 669, 673 (2d Cir. 1995). Dismissal is proper when the plaintiff fails to plead the basic elements of a cause of action. See Wright v. Giuliani, No. 99 Civ. 10091 (WHP), 2000 WL 777940, at *4 (S.D.N.Y.), aff'd, 230 F.3d 543 (2d Cir. 2000). The issue on a motion to dismiss "is not whether a plaintiff will ultimately prevail, but whether the claimant is entitled to offer evidence to support claims." Villager Pond, Inc. v. Town of Darien, 56 F.3d 375, 378 (2d Cir. 1995) (citation omitted).

  "`Copyright infringement is established when the owner of a valid copyright demonstrates unauthorized copying.'" Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998) (quoting Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997)). In Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., the Second Circuit described the showing necessary for a copyright infringement claim:

To demonstrate unauthorized copying, the plaintiff must first "show that his work was actually copied"; second, he must establish "substantial similarity" or that "the copying amounts to an improper or unlawful appropriation," i.e., (i) that it was protected expression in the earlier work that was copied and (ii) that the amount that was copied is "more than de minimis."
338 F.3d 127, 131 (2d Cir. 2003) (quoting Castle Rock, 150 F.3d at 137-38).

  I. Originality

  Defendants argue that the Plaintiff's "Prado" design is lacking in originality because it is an "arrangement of . . . circles in basic rows [that is not] copyrightable." (Def. Reply at 4.) In particular, Defendants allege that "[P]laintiff's Prado design is composed of circles arranged in a grid having four and three quarter rows, with four circles in each row," (Def. Mem. at 5), which "are ubiquitous, and long precede [P]laintiff's design." (Def. Reply at 3.)

  Defendants' arguments are not persuasive. The requirements for originality are "modest". Weissmann v. Freeman, 868 F.2d 1313, 1321 (2d Cir. 1989). In Feist Publications, Inc. v. Rural Telephone Service Co., the Supreme Court noted that "[o]riginal, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." 499 U.S. 340, 345 (1991) (citation omitted). The Court noted that "the requisite level of creativity is extremely low" and that "[t]he vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be." Feist, 499 U.S. at 345 (internal quotations omitted).

  Plaintiff alleges that "[i]n approximately 1997 or 1998, [he] created an original design entitled `Prado.'" (Am. Compl. ¶ 10.) Because Plaintiff has sufficiently alleged that the "Prado" design is original, this Court finds that the Amended Complaint alleges enough originality to withstand a motion to dismiss. See, e.g., County of Suffolk, New York v. First Am. Real Estate Solutions, 261 F.3d 179, 187-88 (2d Cir. 2001) (vacating and remanding dismissal of copyright action where Plaintiff's complaint alleged sufficient originality). Defendants' argument that the "Prado" design lacks originality (Def. Mem. at 3-4; Def. Reply at 3-5) raises factual issues that are best left for trial.

  II. Substantial Similarity

  Defendants also contend that this Court should dismiss the Amended Complaint because Plaintiff cannot show substantial similarity. Specifically, Defendants argue that their "Eclipse" design differs from the "Prado" design in that the two have a different "number of rounded shapes in each row, as well as [a different] number of rows." (Def. Mem. at 6.) Defendants further argue that "[t]he designs also differ in whether the rounded shapes are obscured by or are obscuring the rectangles, and in the extent to which each rounded shape is shaded in a contrasting color." (Def. Mem. at 6.)

  As noted above, a plaintiff alleging copyright infringement must show (i) actual copying; and (ii) substantial similarity to the protected expression in the copyrighted work. See Tufenkian Import/Export, 338 F.3d at 131. For purposes of this motion, Defendants have conceded "actual copying." (Def. Mem. at 3.) Therefore, the only issue for evaluation is whether there is substantial similarity between the two designs.

  In his Amended Complaint, Plaintiff alleges that Defendants' "Eclipse" design is "substantially similar to the [P]laintiff's Prado design." (Am. Compl. ¶ 21.) Plaintiff has further alleged that "[D]efendants' Eclipse design was copied from [Plaintiff's] Prado design." (Am. Compl. ¶ 22.) Plaintiff also attached color pictures of both the "Prado" and "Eclipse" rugs as exhibits to the Amended Complaint. (Am. Compl. Exs. B, E.)

  Defendants argue that the "Prado" design consists of protectable and unprotectable elements (Def. Mem. at 3-4), and that this Court should examine only the protectable elements to evaluate whether there is copyright infringement. (Def. Mem. at 4.) Defendants also argue that an analysis of the "Prado" and "Eclipse" designs reveals the two designs are not similar, with a number of differences between the two designs. (Def. Mem. at 6-7.)

  As Judge Lynch recently noted, while courts often examine "the amount of the copyrighted work that was copied in determining whether the allegedly infringing work falls below the quantitative threshold of substantial similarity, there are no bright line rules for what constitutes substantial similarity, and the issue must be decided case by case." Silberman v. Innovation Luggage, Inc., No. 01 Civ. 7109 (GEL), 2003 WL 1787123, at *8 (S.D.N.Y. April 3, 2003). A determination of the extent of similarity that will constitute substantial similarity presents a highly fact specific question. See Warner Bros., Inc., v. Am. Broadcasting Cos., Inc., 654 F.2d 204, 208 (2d Cir. 1981). For that reason, copyright cases are rarely dismissed on a 12(b)(6) motion. See, e.g., Great Am. Fun Corp. v. Hosung New York Trading Inc., 935 F. Supp. 488, 489 (S.D.N.Y. 1996) (the "question of substantial similarity should be reserved for the trier of fact — or at least the summary judgment stage"); Cognotec Servs., Ltd. v. Morgan Guar. Trust Co. of New York, 862 F. Supp. 45, 50 (S.D.N.Y. 1994) ("A motion to dismiss is not the proper procedural mechanism to make this factual inquiry."). Defendants are asking this Court to make a factual inquiry regarding whether the relevant portion of the "Eclipse" design is substantially similar to the protectable elements of the "Prado" copyrighted design. Such an analysis requires this Court to look beyond the Amended Complaint, and thus is improper at this stage. See Villager Pond, 56 F.3d at 378 (noting that a motion to dismiss does not involve consideration of whether "plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims.") (citation omitted). Because Defendants' arguments go to the merits of this action and not the sufficiency of the pleading, they are inappropriate for resolution on this motion. CONCLUSION

  For the reasons set forth above, Defendants' motion to dismiss the Amended Complaint is denied.


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