United States District Court, S.D. New York
September 6, 2005.
COACH, INC. and COACH SERVICES, INC., Plaintiffs,
MARYBETH PETERS, REGISTER OF COPYRIGHTS, Defendant.
The opinion of the court was delivered by: JOHN SPRIZZO, Senior District Judge
MEMORANDUM OPINION AND ORDER
Plaintiffs, Coach, Inc. and Coach Services, Inc. (collectively
"Coach"), bring this action, pursuant to 5 U.S.C. § 702, seeking
an Order of this Court directing defendant, Marybeth Peters,
Register of Copyrights of the United States Copyright Office
("defendant" or "Register"), to register its "Signature CC Fabric
Design" ("Coach 1") and "Signature CC Fabric Design (Black)"
("Coach 2") (collectively "works"), in their names. Both parties
bring motions, pursuant to Rule 56 of the Federal Rules of Civil
Procedure, for summary judgment. For the reasons set forth below,
the Court denies plaintiffs' motion and grants defendant's
Coach, a well-known company that designs handbags and other
consumer products, see Pls.' Statement of Uncontroverted Facts
("Pls.' St.") ¶¶ 4, 7-9; Am. Compl. ("Compl.") ¶ 4, designed the
now ubiquitous works at issue in this action, see Pls.' St. ¶¶
5-9; Administrative R. of Coach 1 ("A.R. 1"), Ex. 3, Letter of
Norman H. Zivin, dated Aug. 15, 2002 ("Aug. Zivin Letter"), Ex. A
("Articles"); see also Decl. of Daniel J. Ross, dated Feb.
12, 2004, Exs. N, O. Plaintiffs describe the works as
"consist[ing] of a distinctive pattern comprising two linked
elements facing each other in a mirrored relationship and two
unlinked elements in a mirrored relationship and positioned
perpendicular to the linked elements."*fn1 Pls.' St. ¶ 10.
Plaintiffs filed applications with the United States Copyright
Office to register Coach 1 and Coach 2 on August 15, 2001 and August 20,
2002, respectively. Id. ¶¶ 15, 21.
The application to register Coach 1 was initially denied by
letter dated December 18, 2001. A.R. 1, Ex. 6. Following a
request for reconsideration, that decision was upheld in a letter
dated July 17, 2002. A.R. 1, Ex. 4. Plaintiffs sought a second
reconsideration on August 15, 2002, Aug. Zivin Letter, which was
denied by the Copyright Office Board of Appeals by letter dated
September 17, 2003, A.R. 1, Ex. 1. That decision constituted
"final agency action." A.R. 1, Ex. 1 at 8.
In an eight-page decision, the Board of Appeals determined that
Coach 1 could not be copyrighted "because it does not contain the
required amount of original artistic, that is, pictorial or
graphic authorship." Id. at 1. Describing Coach 1 as a "pattern
consist[ing] of two linked `C's' facing each other alternating
with two unlinked `C's' facing in the same direction," id. at
4, the Board of Appeals concluded that relevant case law,
regulations, and the Compendium of Copyright Office Practices
precluded a finding of copyrightability because letters of the
alphabet cannot be copyrighted and because Coach 1's variations
and arrangements of the letter "C" were simply not sufficient to
establish the necessary amount of creativity required for
copyright protection, id. at 3-8. In addition, the Board of
Appeals rejected plaintiffs' argument that the work's commercial
and critical success supported its copyright. Id. at 6-7.
The application of Coach 2 met a similar fate. Pls.' St. ¶¶
21-26. Following two requests for reconsideration, the Board of
Appeals, in a letter dated December 4, 2003, refused to copyright
Coach 2. Administrative R. of Coach 2 ("A.R. 2"), Ex. 1. The
Board determined that, with the exception of its color, Coach 2
was identical to Coach 1, and therefore it concluded that the
same rationales for denial were applicable.*fn2 Id.
Plaintiffs filed a complaint dated October 16, 2003, and an
amended complaint dated December 8, 2003, in which they ask this
Court to review, pursuant to the Administrative Procedure Act
("APA"), 5 U.S.C. §§ 701-706, defendant's refusal to register the
works, Compl. ¶ 1, and to "order defendant and the officers,
agents, employees, successors and servants of defendant to
register [the works] in the name of [plaintiffs]," Compl. at 5.
The Court heard Oral Argument on the parties' Cross-Motions for
Summary Judgment on June 14, 2004. Expressing concern about the
legal ramifications that a decision on those motions would have
in any future infringement actions brought by plaintiffs, the
Court denied both motions and placed this case on suspense,
pending an infringement action brought by plaintiffs. See Tr.,
dated June 14, 2004, at 24-29. At a regularly-scheduled Pre-Trial
Conference held on June 20, 2005, plaintiffs indicated that they
had no intention of bringing an infringement action, and both
parties requested that the Court revisit their Cross-Motions for
A court may only grant summary judgment when "there is no
genuine issue as to any material fact and . . . the moving party
is entitled to a judgment as a matter of law." Fed.R.Civ.P.
56(c). When ruling upon cross-motions for summary judgment, the
court must evaluate each motion separately and must draw all
reasonable inferences against the party whose motion is under
consideration. See Boy Scouts of Am. v. Wyman, 335 F.3d 80,
88 (2d Cir. 2003).
Pursuant to 17 U.S.C. § 701(e) the decision of the Register of
Copyrights to deny an application for registration is reviewable
under the APA. The Act provides that a court may set aside agency
action where it is "arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law," 5 U.S.C. § 706(2) (A), and
therefore the Register's decision is entitled "to a significant
degree of deference," The Homer Laughlin China Co. v. Oman, No.
90-3160, 1991 U.S. Dist. LEXIS 10680, at *3 (D.D.C. July 30,
1991), which will only be upset if the Register fails to
"intelligibly account for [her] ruling" or if her decision is not
the product of "reasoned decisionmaking," Atari Games Corp. v.
Oman, 888 F.2d 878, 879 (D.C. Cir. 1989); see also Custom
Chrome, Inc. v. Ringer, No. Civ. A. 93-2634, 1995 WL 405690, at
*3-5 (D.D.C. June 30, 1995); Jon Woods Fashions, Inc. v.
Curran, No. 85 Civ. 3203, 1988 WL 38585, at *2-3 (S.D.N.Y. Apr.
The Court begins its analysis by noting that, since review
under the APA is limited to a consideration of the administrative
record, see Natural Res. Def. Council v. Muszynski,
268 F.3d 91, 96-97 (2d Cir. 2001), all parties agree that there are no
genuine issues of material fact and therefore summary judgment is
appropriate, see Pls.' Mem. at 6; Def.'s Mem. at 13. In
addition, the Court notes that given the limited scope of review
and the deferential standard applied to the Register's decision,
the Court's ruling in this action is necessarily not equivalent
to a finding that the works at issue here are not copyrightable
and therefore this ruling should not preclude such a finding in a
future infringement action. See OddzOn Prods., Inc. v. Oman,
924 F.2d 346, 347 (D.C. Cir. 1991).
In the present case, plaintiffs argue that this Court should
"order defendant and the officers, agents, employees, successors
and servants of defendant to register [the works] in the name of
[plaintiffs]," Compl. at 5, because defendant incorrectly
determined that the works lacked sufficient creativity, Pls.'
Mem. at 7-8, failed to consider the works as a whole, id. at
10, 13, improperly viewed the "elements" as "C's," id. at 11,
12, and failed to take into account that the commercial and
critical success of the works indicates that "the public and the
trade view the [w]orks as containing artistic merit," Pls.' Mem.
in Opp'n at 7; Pls.' Mem. at 11. This Court cannot agree. First, plaintiffs have cited no
authority, and the Court is aware of none, that would allow this
Court, on a review under the APA, to order defendant to register
the works. See, e.g., Atari Games Corp. v. Oman,
979 F.2d 242, 247 (D.C. Cir. 1992) (remanding case for a second time "for
renewed consideration consistent with this court's opinion").
This is especially true since relief in the form of mandamus is
unavailable because of the other adequate remedies available to
plaintiffs, namely this review under the APA, see Jon Woods
Fashions, Inc., 1988 WL 38585, at *2, and the ability to bring
an infringement action "notwithstanding the refusal of the
Register to register the claim to copyright," Nova Stylings,
Inc. v. Ladd, 695 F.2d 1179, 1181-82 (9th Cir. 1983).
Second, plaintiffs have not shown that defendant's decision not
to register the works was arbitrary and capricious. To the
contrary, defendant's decision is explained in a thorough,
well-reasoned, and well-articulated letter. See A.R. 1, Ex. 1.
Acknowledging at the outset that the amount of creativity
required for registration is "minimal," id. at 3, defendant
proceeded to explain why the works at issue fall into the "narrow
category of works in which the creative spark is insufficient to
support a copyright," id.
In its decision, the Board of Appeals noted that the name of
Coach's design is the "Signature CC Fabric Design," and it
determined that the work was "comprised of an arrangement of the
letter C." Id. at 7-8. Although plaintiffs contend that the
design is one of linked and unlinked "elements" which "do not
comprise any basic geometric shapes, lettering or typography,"
Pls.' Mem. at 1-2, 12, they cannot seriously maintain that
defendant acted arbitrarily and capriciously in interpreting
these "elements" as the letter "C." In fact, in support of their
second request for reconsideration plaintiffs attached a series
of articles which discussed the works and which noted, among
other things, that "[t]he `C' stands for Coach," Catherine Curan, "Coach Carries the Trendy Set," Crain's N.Y.
Bus., Mar. 11, 2002, at 3, reprinted in Articles, that
"[f]or Coach Inc., `C' or more specifically double `C's'
represent a new era," Dana Lenetz, "Coach Class," Bus. and
Industry, Nov. 26, 2001, at 22, reprinted in Articles, and
that "[t]he material, which is patterned with the letter `C,'
comes in two color combinations," Susan Chandler, "Profitable
Promotion Propels Downtown Success," Chi. Trib., Feb. 3, 2001,
reprinted in Articles.*fn3
Having determined that the works were essentially arrangements
of the letter "C," defendant noted that letters, mere variations
of letters, and familiar symbols cannot be copyrighted. A.R. 1,
Ex. 1 at 3-4 (citing 37 C.F.R. § 202.1(a) and Compendium of
Copyright Office Practices, Compendium II, § 503.02(a)).*fn4
Defendant cited a number of cases which held that simple
arrangements of such items are similarly uncopyrightable. See,
e.g., Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991); John Muller & Co. v. N.Y. Arrows Soccer Team, Inc.,
802 F.2d 989 (8th Cir. 1986); The Homer Laughlin China Co.,
1991 U.S. Dist. LEXIS 10680; Jon Woods Fashions, Inc., 1988 WL
38585; Magic Mktg., Inc. v. Mailing Servs. of Pittsburgh, Inc.,
634 F. Supp. 769 (W.D. Pa. 1986); Forstmann Woolen Co. v. J.W.
Mays, Inc., 89 F. Supp. 964 (E.D.N.Y. 1950).
Plaintiffs fail to argue persuasively that defendant
incorrectly relied on these cases, much less that this reliance
was so improper as to amount to an abuse of discretion. Cases
plaintiffs rely on are factually distinguishable, see, e.g.,
Boisson v. Banian, Ltd., 273 F.3d 262 (2d Cir. 2001) (involving
issued copyright of detailed and intricate quilt design), and
wholly irrelevant, since the Copyright Office does not compare
works that have gone through the registration process, see A.R. 1, Ex. 1 at 5 (citing Compendium of Copyright
Office Practices, Compendium II, § 108.03); The Homer Laughlin
China Co., 1991 U.S. Dist. LEXIS 10680, at *6.
In addition, plaintiffs' argument that defendant failed to
consider the works as a whole is belied by the record. See A.R.
1, Ex. 1 at 5, 7-8. As indicated above, defendant cited to
numerous authorities for the proposition that the mere
arrangement of symbols and letters is not copyrightable, and
defendant concluded not simply that the letter "C" is not
copyrightable, but that "`[t]he elements embodied in this work,
individually, and in their particular combination and
arrangement, simply do not contain a sufficient amount of
original and creative authorship to be copyrightable.'" A.R. 1,
Ex. 1 at 2 (quoting A.R. 1, Ex. 4, Letter of Copyright Office,
dated July 17, 2002, at 3) (alteration in original) (emphasis
Finally, plaintiffs' argument that defendant's decision should
be upset because of defendant's failure to consider the
commercial and critical success of the works is meritless.
Defendant considered plaintiffs' argument, analyzed the relevant
cases and regulations, and concluded that the argument was
unsupported by law and completely irrelevant to the question of
whether the works embodied "the required quantum of creativity."
A.R. 1, Ex. 1 at 6-7 (citing Paul Morelli Design, Inc. v.
Tiffany & Co., 200 F. Supp. 2d 482 (E.D. Pa. 2002) and
Compendium of Copyright Office Practices, Compendium II, §
In sum, plaintiffs have failed to overcome the substantial
deference that this Court must afford defendant's decision
denying registration of the works because plaintiffs have not
shown that defendant acted arbitrarily and capriciously. CONCLUSION
Based on the foregoing, plaintiffs' Motion for Summary Judgment
is denied and defendant's Motion for Summary Judgment shall be
and hereby is granted. The Court directs the Clerk of the Court
to enter judgment for defendant and to close this case.
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