United States District Court, S.D. New York
November 8, 2005.
ODEGARD INC., Plaintiff,
SAFAVIEH CARPETS, INC. and SAFAVIEH, INC., Defendants.
The opinion of the court was delivered by: ROBERT SWEET, District Judge
Defendants Safavieh Carpets, Inc. and Safavieh, Inc.
("Safavieh") have moved pursuant to Rule 56, Fed.R.Civ.P., for
summary judgment to dismiss the claim of copyright infringement
contained in the complaint of plaintiff Odegard Inc. ("Odegard").
For the reasons set forth below, the motion is granted.
On June 2, 2004, Odegard filed its complaint alleging causes of
action for copyright infringement, unfair competition, conversion
and unjust enrichment arising out of the alleged substantial
similarity between the Mahogany carpet in Safavieh's Rodeo Drive
collection and the Takyu III design in Odegard's Kyoto
collection. An answer containing affirmative defenses and
counterclaims was filed and Odegard filed its reply. Discovery
was had and the instant motion was marked fully submitted on July
The facts are set forth in the parties' Local Rule 56.1
Statements. For the purposes of this motion, Safavieh does not
challenge Odegard's assertion that Safavieh had access to
Odegard's Takyu III design. Odegard designs, manufactures, and sells Tibetan carpets. Among
its various lines of carpets, Odegard sells a design called
Stephanie Odegard is the president of Odegard who created the
Takyu III design in the middle to late 1990's, elements of which
were inspired by and derived from an antique Japanese Kimono
depicting vines. Odegard sells the Takyu III carpet as part of
its "Kyoto Collection."
Takyu III is a hand-drawn design. The work "takyu" means vine
in the Tibetan language, perhaps a particular vine. The spindly
vines in Takyu III turn and curl in every direction. In Takyu III
some of the vines spill from the broken border into the large
open field at the center of the design. Most of the vines in
Takyu III have stems and leaves and curlicues. Some of the vines
in Takyu III have multiple leaves on the vine stems and have a
floralesque aspect. Most of the vines in Takyu III are
curvilinear, constituting a curvy design rather than a geometric,
straight-edge design. The blocks of color in the border of the
Takyu III design are separated by straight edges between them
except that the handmade process sometimes alters the straight
appearance. Each edge between the colored blocks in the border of
Takyu III consists of a narrow scissored line. Borders are common elements in carpet design while broken
borders are not. Branches of plants are common elements in carpet
design. The combination of patterned borders (but not broken
borders) and floral motifs were commonly used in carpets before
the middle to late 1990's.
Odegard carpets are known for their "contemporary classic"
U.S. Copyright Registration No. VA-1-035-311 for the Takyu III
fabric design identified the textile design created by Odegard
known as "Takyu" as a preexisting work on which Odegard holds a
copyright registration and identified the material added to the
work as motifs selected from "Takyu" and made into a new design
layout. The fabric design known as "Takyu III" was created by
In addition, the unrebutted affidavit of Stephanie Odegard,
president of Odegard, describes her background, including service
in the Peace Corp., familiarity with Tibetan products, and the
development and establishment of Odegard and its success in the
design world. Odegard is preeminent in the importation of
hand-knotted woolen carpets, its sales exceed $10 million and its
sales of 350 Takyu III rugs have produced $1.6 million in
revenues. Odegard has spent $300,000 between 2000 and 2004
advertising the Takyu III rug. Stephanie Odegard described in detail the process
by which she created the Takyu III design.
Safavieh sells carpets in the United States and among its many
designs Safavieh sells a collection called the "Rodeo Drive
Collection" which includes a carpet design named "Mahogany."
Sales of the Mahogany design totalled $5,196.20 and have been
Albert Laboda ("Laboda"), the employee of Safavieh who created
the Mahogany design of Safavieh used a computer to create the
Mahogany design. Laboda, who was employed for about a year, is no
longer an employee of Safavieh and is a missing witness.
Odegard advertised its Takyu III design from 2000 to 2004 in
prominent design magazines, many of which are regularly read by
Summary Judgment Is Appropriate
Summary judgment may be granted when "there is no genuine issue
as to any material fact and the moving party is entitled to
judgment as a matter of law." Fed.R.Civ.P. 56(c); see
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Non-infringement may be determined as a matter of law. Walker
v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986), citing
Warner Bros. v. American Broadcasting Co., 720 F.2d 231, 240
(2d Cir. 1983), cert. denied, 476 U.S. 1159 (1986).
Courts in the Second Circuit have granted motions for summary
judgment on non-infringement in copyright cases. see, e.g.,
Williams v. Crichton, 84 F.3d 581 (2d Cir. 1996); Churchill
Livingstone, Inc. v. Williams & Wilkins, 949 F. Supp. 1045
(S.D.N.Y. 1996). The Second Circuit has held that where both the
plaintiff's and defendant's works are before the court, "the
court may compare the two works and render a judgment for the
defendant on the ground that as a matter of law a trier of fact
would not be permitted to find substantial similarity." Durham
Indus., Inc. v. Tomy Corp., 630 F.2d 905, 918 (2d Cir. 1980).
To establish copyright infringement, Odegard must prove: (1)
ownership of a valid copyright, and (2) infringing copying of
constituent elements of the works that are original. Eve of
Milady v. Impression Bridal, Inc., 957 F. Supp. 484, 487
(S.D.N.Y. 1997), citing Laureyssens v. Idea Group, Inc.,
964 F.2d 131, 139 (2d Cir. 1992); Williams v. Crichton,
84 F.3d 581, 587 (2d Cir. 1996), citing Feist Publications, Inc. v.
Rural Tel. Servs., Inc., 499 U.S. 340, 361 (1991). For the
purposes of this motion, Safavieh has assumed, without admitting,
that Odegard owns a valid copyright in the Takyu III design and that it had access to the Takyu III
The Differences Between The Designs
The hand-drawn Takyu III design is characterized by its
meandering vines which run and curl in every direction. The vines
have clearly defined leaf shapes, joined to the vines at one end
of the leaf, as occurs in nature. The computer-generated Mahogany
design has no vines or curls but relatively long and straight
lines, interspersed with uniformly shaped oval figures, displayed
in a diagonal arrangement. Some lines pierce and run through the
oval figures. Other lines are broken up by, and connect, the oval
The Takyu III design has leaves on certain vines. All the
leaves are leaf-shaped, not ovals. The leaves are also sized
differently. Some vine branches have very small leaves, almost
like spines along the vines. The Mahogany design has oval shapes
of uniform size only, some intersected by lines, and no leaf
shapes at all.
The lines and only oval shapes in Mahogany create a design of
contrasting geometric shapes with lines and ovals in place of the
vines in Takyu III which are curvy in appearance and
"floralesque." The floral appearance of the Takyu III design results in part
from the random extensions of the vines into the large field at
the middle of the design. The vines in Takyu III are of irregular
length and, as a result, are not confineable to a narrow border
region. The Mahogany design does not have anything displayed in
the field in the middle. The shapes and lines in the border end
where the border meets the field.
The broken borders, too, are different between the two designs.
The colored blocks in Takyu III about each other, adjacent blocks
demarcated only by narrow-width parallel lines. The colored
blocks in the Mahogany design are separated by thick, jagged
lines which are not even uniform in thickness.
Some of the colored segments in the border of the Mahogany
design are not fully separated. Some segments have dividing lines
that start at the edge of the carpet, stop in the middle of the
border, and start again before reaching the middle field.
Takyu III has 14 distinct colored blocks in its border.
Mahogany appears to have 19 blocks, unevenly arranged.
The Takyu III design shown in the deposit material to the
copyright application includes a colored border block displayed
with the same light blue color pictured in the field in the
middle of the design, creating the appearance of an asymmetric design.
The border design in the Mahogany carpet, on the other hand,
appears symmetrical. The color in the field is offset by the
non-matching color shown in each and every and every block in the
The combination of colors shown in the deposit material also
differs entirely from any combination of colors used by Safavieh
for its Mahogany design. The combination of light blue, dark
blue, olive, ivory and orange displayed in the deposit material
are missing from any of the accused designs.
The "More Discerning Observer" Test Is Applicable
It is a reasonable inference under the circumstances here that
Laboda used the Takyu III design in creating his computer design.
He is no longer employed, there are no records of his design
work, and those to whom he submitted his design did not observe
him as he created his design. Because of Odegard's prominence and
advertising, access is presumed for the purpose of this motion.
However, that inference does not end the inquiry.
Illegal copying is proved by showing substantial similarity,
not between the works as a whole, but only as between the
protectable elements of the copyrighted work and the accused
infringing work. See Folio Impressions Inc., v. Byer
California, 937 F.2d 759, 765-66 (2d Cir. 1991); Knitwaves, Inc. v.
Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995).
The protectable elements in the Takyu III design must not
include any elements in the public domain such as the vines,
including the leaves, stems and curlicues, derived from the
"Takyu" Japanese Kimono which was identified as preexisting
material in the Certificate of Registration for the Takyu III
Certain elements of the Takyu III design, such as borders and
branches, are common elements in carpet design and the
combination of patterned borders and floral motifs were commonly
used in carpets before the middle to late 1990's.
Therefore, the only protectable aspect of the Takyu III design
is the selection and arrangement of the otherwise unprotectable
elements. Indeed, the Certificate of Registration for Takyu III
indicates that the material added to the preexisting work are
motifs selected from "Takyu" that have been made into a new
design layout. That new layout consists of vines meandering
around the broken border and straying into the large open field.
Odegard's selection and arrangement of the meandering vines and
broken border into a new layout is entitled to only a narrow
scope of protection. In Feist Publications, Inc. v. Rural Tel.
Servs., Inc., 499 U.S. 340 (1991), the Supreme Court held that copyright protection in the selection, coordination and
arrangement of otherwise uncopyrightable elements is "thin"
because the scope of the copyright is limited to the particular
selection or arrangement. Id. at 349-51. Furthermore, a
"subsequent [author] remains free to use [the public domain
elements] to aid in preparing a competing work, so long as the
competing work does not feature the same selection and
The difficulty of the application of the "ordinary observer"
standard and the "more discerning" ordinary observer standard is
exemplified by the Court of Appeals discussion of the standards
in Hamil America, Inc. v. GFI, 193 F.3d 92 (2d Cir. 1999). In
that case the court stated:
Here, there is no contention that either party
imported unprotectable material from the public
domain into its floral fabric design. We therefore
need not apply the "more discerning" ordinary
Id. at 102.
In discussing the "more discerning" standard considered in
Folio Impressions, the court stated:
Having narrowed the scope of the copyright, we
applied a "more discerning" ordinary observer test
and compared only the protected portion of the design
that is, the roses and the way they were arranged,
rather than their display against the background to
the allegedly infringing fabric design. Folio
Impressions, 937 F.2d at 765-66; see also
Knitwaves, 71 F.3d at 1003. Id. at 101.
Based on these authorities the "more discerning ordinary
observer" test is applicable in determining substantial
The Designs Are Not Substantially Similar
Odegard does not dispute that its copyright is limited to its
original contributions in selecting, modifying, coordinating,
coloring and arranging the public domain elements found in its
work. As such, the copyright in Takyu III is "thin" because its
scope is limited to the particular selection or arrangement.
Feist Publications, Inc. v. Rural Tel. Servs., Inc.,
499 U.S. 340, 349-51. See also Beaudin v. Ben & Jerry's Homemade,
Inc., 95 F.3d 1, 2 (2d Cir. 1996) ("Where the quantum of
originality is slight and the resulting copyright is `thin,'
infringement will be established only by very close
copying . . ."). Here, any copying is not "very close" because the
Mahogany design does not feature the same selection and
arrangement of public domain elements found in Takyu III.
Notwithstanding its admission of the public domain elements
found in Takyu III, Odegard has argued that the Takyu III has no
public domain elements. According to Odegard, the "Takyu" design
identified as preexisting material in the Certificate of
Registration for Takyu III is not the same Japanese kimono found
in the public domain, but rather the first design created by
Stephanie Odegard based upon that Japanese Kimono. To the extent
that the public domain elements found in the Japanese kimono
served as a basis for the design of Takyu, and to the extent that
Takyu was a predecessor design to Takyu III, the vines found in
Takyu III are still public domain elements that should be
discounted in any infringement and analysis.
In granting summary judgment on non-infringement for the
defendant, the court in Maharishi Hardy Blechman v. Abercrombie
& Fitch Company, 292 F. Supp. 2d 535, 554 (S.D.N.Y. 2003),
stated that the "noted differences are merely illustrative of a
factual finding which is difficult to explain."
Knitwaves, Inc. v. Lollytogs Ltd., Inc., 71 F.3d 996 (2d Cir.
1995), is relied upon by Odegard. Unlike in the case at bar, the
copyrighted sweaters in Knitwaves were original creations in
their entireties. Id. at 1004 n. 3. Furthermore, the defendant
Lollytogs also had chosen to use the same two fall symbols,
leaves and squirrels, used by the plaintiff Knitwaves. Id. at
1004. Consequently, according to the court, "an observer viewing
the sweaters side by side cannot help but perceive them as coming
from one creative source." Id.
Here, no reasonably discerning consumer (i.e., one who would
spend thousands of dollars on a carpet) would expect the two designs to share a common source of origin. Odegard's Takyu III
looks like the expensive hand-made carpet that it is and
Safavieh's computer-generated Mahogany rug is not substantially
Indeed, it is the differences in the individual details that
make the overall designs decidedly different in look and feel. No
reasonably discerning observer would find that the Mahogany
design has a "floraseque" appearance like the classic design in
the Japanese-inspired Takyu III. The same consumers would not be
interested in comparing or buying both designs for the same
purpose and the Mahogany rug would not be viewed as a viable
commercial substitute for the Takyu III carpet.
Odegard's reliance upon Tufenkian Import/Export Ventures, Inc.
v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003) is
misplaced. In Tufenkian, the Second Circuit noted that it was
"one of those relatively unusual cases" where the infringing work
copies the "particular" or "same" selections made in the
copyrighted work. Id. at 136. The selections identified by
Odegard are simply not the same as those contained in the
The border in Mahogany is not the same as the border in Takyu
III. The colored blocks in Takyu III abut each other while the
differently colored blocks in Mahogany are separated by thick,
jagged lines. The vines randomly extend into the large open field
at the middle of the Takyu III design, thus emphasizing the
floral appearance of the Takyu III design. The Mahogany rug has more
blocks, unevenly arranged, than the 14 distinct colored blocks
found in the border of the Takyu III carpet. The selections made
by Odegard and allegedly copied by Safavieh are far different
from those made in Tufenkian.
The Mahogany rug not only lacks the same selection and
arrangement of design features found in the Takyu III carpet, but
it also lacks the same designs. The lines in Mahogany are not
similar to the vines or leaves found in Takyu III. Safavieh has
selected, modified, coordinated, colored and arranged different
non-copyrightable elements in different ways than Odegard. The
differences between the individual design elements establishes
that the designs are not substantially similar to the "more
discerning ordinary observer."
For the reasons set forth above, the motion of Safavieh for
summary judgment is granted and the cause of action for
infringement is dismissed.
It is so ordered.
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