United States District Court, S.D. New York
OPINION & ORDER
KATHERINE B. FORREST UNITED STATES DISTRICT JUDGE.
case centers around a copyright infringement dispute between
plaintiff Jetmax Limited (“Jetmax”) and
defendants Big Lots, Inc. (“Big Lots”), Advance
International, Inc. (“Advance”), and Herbert
Feinberg (“Feinberg”) regarding Jetmax's
Metal Wire Wrapped Tear Drop Light Set (the “Tear Drop
Light Set”), the subject of U.S. Copyright Registration
No. VAu 978-587 (the “‘587 Copyright
Registration”). The Tear Drop Light Set is an
ornamental light set comprised of a series of molded,
decorative tear shaped covered lights with a wire frame over
before the Court is plaintiff's motion for summary
judgment (ECF No. 34) and defendants' cross-motion for
summary judgment (ECF No. 42). Plaintiff seeks a judgment
that defendants have willfully infringed the ‘587
Copyright Registration through their sale of a substantially
similar light set. (See Plaintiff's Memorandum
of Law in Support of Motion for Summary Judgment of Willful
Copyright Infringement (“Pl.'s Mem. in
Supp.”), ECF No. 35, at 6.) In opposition, and in
furtherance of their cross-motion, defendants argue that
plaintiff does not own a valid certificate of copyright
registration and that the Tear Drop Light Set is not
copyrightable. (Defendants Memorandum of Law in Opposition to
Plaintiff's Motion for Summary Judgment and in Support of
Defendants Cross-Motion for Summary Judgment
(“Dfs.' Mem. in Supp.”), ECF No. 42, at 4-5.)
Specifically, defendants argue that the Tear Drop Light Set
is not copyrightable because it is a useful article and
because it lacks originality. (Id.)
discussed below, the Court determines that under the Supreme
Court's recent decision in Star Athletica, L.L.C. v.
Varsity Brands, Inc., 137 S.Ct. 1002 (2017), the Tear
Drop Light Set contains artistic elements that “can be
identified separately from, and are capable of existing
independently of, the utilitarian aspects of the
article.” See 17 U.S.C. § 101.
Accordingly, the Court rejects defendants' argument that
the Tear Drop Light Set in its entirety it is not entitled to
copyright protection as a useful article. The Court also
finds, however, that there are genuine disputes of material
fact concerning whether plaintiff owns a valid certificate of
copyright registration covering the Tear Drop Light Set and
whether the Tear Drop Light Set is sufficiently original to
warrant copyright protection. Accordingly, plaintiff's
motion for summary judgment is DENIED and defendants'
cross-motion for summary judgment is also DENIED.
is a Hong Kong corporation that designs, manufactures, and
sells a variety of furniture, lighting, and home décor
items. (Defendants Response to [sic] Jetmax Limited's
Statement of Material Facts on Plaintiff's Motion for
Summary Judgment (“Defs.' 56.1 Resp.”)
¶¶ 1, 20, ECF No. 45.) At the heart of the instant
dispute is the Tear Drop Light Set, manufactured and offered
for sale by Jetmax. (Id. ¶ 32.) The Tear Drop
Light set, as depicted below, is an ornamental light set
comprised of a series of molded, decorative tear shaped
covers with a wire frame over the covers.
of Reena Jain in Support of Plaintiff's Motion for
Summary Judgment of Willful Copyright Infringement
(“Jain Decl.”) Ex. 1, ECF No. 36-1.)
Tear Drop Light Set was designed in 2004 and has been on sale
since September 2005. (Defs.' 56.1 Resp. ¶¶ 24,
32.) The set contains a string of lights that are each
surrounded by a plastic, tear drop shaped, iridescent cover.
The plastic covers each contain eight sets of double grooves.
(Defs.' 56.1 Resp. ¶ 67.) Each cover is in turn
surrounded by a wire frame comprised of eight pieces of wire
that rest between the double grooves. (Defs.' 56.1 Resp.
¶ 67.) A plastic stone hangs from the tip of each wire
frame. (See Jain Decl. Ex 14 at 3.)
Tear Drop Light Set, along with seven other light sets, is
the subject of the ‘587 Copyright Registration.
(Plaintiff's Responses to Defendants' Statement of
Material Facts (“Pl.'s 56.1 Resp.”)
¶¶ 5-6, ECF No. 53; Defs.' 56.1 Resp. ¶
29; see Affirmation of Harlan Lazarus in Opposition
to the Plaintiff's Motion for Summary Judgment and in
Support of Defendants Cross-Motion for Summary Judgment
(“Lazarus Aff.”) Ex. A, ECF No. 43-1.) Jetmax
claims authorship of the ‘587 Copyright Registration, a
fact that defendants dispute. (Defs.' 56.1 Resp. ¶
Advance, a New York corporation engaged in the wholesale
manufacturing industry, produced the allegedly infringing
product (the “Advance Light Set”), depicted
below. The Advance Light Set has been sold at defendant Big
Lots's stores since early 2015. (Defs.' 56.1 Resp.
¶¶ 42-43; Pl.'s 56.1 Resp. ¶¶ 8-20.)
Similar to the Tear Drop Light Set, the Advance Light Set has
a teardrop shaped plastic cover with eight sets of double
grooves, as well as a decorative wire frame containing eight
pieces of wire and the come together in a question mark form.
(Defs.' 56.1 Resp. ¶ 67.) The Advance Light Set does
not contain an ornamental dangly and the cover does not have
an iridescent finish. (Pl.'s 56.1 Resp. ¶ 17.)
Decl. Ex. ...