Articles
Copyright Law: Ay, There's the Rug
By Robert Clarida
Oct. 9, 2003
Had Hamlet been reincarnated as an award-winning designer of Oriental carpets, he might have said something similar in the face of infringing imitations. But the tribulations of the Prince of Denmark shall not detain us. Instead, we review a recent Second Circuit decision in which the Court considered the applicability of the 'look and feel' test for copyright infringement in a case involving two carpet designs.
On July 30, 2003, in Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., et al., ('Tufenkian'),1 the Court of Appeals reversed the Southern District to hold that defendants had infringed plaintiff's copyright in a carpet design. Writing for the Court, Circuit Judge Guido Calabresi held that defendants' design was substantially similar to, and therefore infringed, plaintiff's design, notwithstanding differences in the 'total concept and feel' of the two designs. The Court of Appeals reversed the District Court's holding of non-infringement, which had been based on the differences in 'total concept and feel,' because there were sufficient specific similarities of protectible expression that the lower court had failed to consider.
Works At Issue
Tufenkian is one of America's leading designers and manufacturers of Oriental style carpets, whose designs have been featured in prominent interior design publications. Among the many original designs created by Tufenkian since 1985 is the design at issue in this case, called the 'Floral Heriz.'
In 1993 Appellant's principal, James Tufenkian, created the Floral Heriz design by selecting two completely unrelated public domain rug designs as source material, combining and altering portions of those designs, subtracting hundreds of original elements from the source material, and adding numerous original graphic elements of his own creation, including two detailed rectangular borders featuring motifs unrelated to the public domain source material.
One of the sources James Tufenkian incorporated into the design of his Floral Heriz was a traditional public domain Persian carpet sold by Battilossi. James Tufenkian selected a small, off-center section of the Battilossi carpet, comprising roughly 17% of the entire Battilossi design, as the starting point for the central portion (the 'field') of his Floral Heriz design. From this portion of the Battilossi field, Tufenkian eliminated numerous details to create a more modern, spacious look, and elongated and modified the remaining elements.
The second public domain source James Tufenkian selected for incorporation into his Floral Heriz design was an unrelated Indian Agra carpet design sold by Doris Leslie Blau. Tufenkian adapted the Blau design to create the largest of the three Floral Heriz borders. The Blau design was from an Indian rug, geographically and stylistically incongruous with the fragment of the Battilossi design selected as the basis of Floral Heriz field. As with the Battilossi design, Tufenkian made non-trivial adaptations of individual elements from the Blau design. The resulting Floral Heriz border, derived from the unrelated Blau design, was overscaled relative to the Floral Heriz field, when compared to the Battilossi design.
Sometime in 1995, defendant Bashian Brothers retained the services of Michael Nichols-Marcy, an independent contractor, to oversee the design of the accused work, called the 'Bromley 514.' Nichols-Marcy had been an employee of Tufenkian prior to founding defendant Noreen Seabrook Marketing. The Bromley 514 was Nichols-Marcy's first design for Bashian Brothers, and the design work on the Bromley 514 began in May 1996, more than two years after the successful introduction of the Tufenkian design.
Nichols-Marcy and his Nepalese subcontractor, Nepal Carpet Enterprises, had access to an advertisement showing the Tufenkian Floral Heriz design at the time the Bromley 514 was created. Before marketing the Bromley 514, they changed its large border at least in part to distinguish it from the Floral Heriz's border, but various other similarities remained between the two rug designs. Most significantly, the defendants' design largely replicated plaintiff's original selection of which elements of the public domain designs were retained in the new work and which were eliminated.
The District Court Decision: No Infringement
On cross-motions for summary judgment, the district court found that Tufenkian's Floral Heriz design contained sufficient original expression to be copyrightable, and that defendants had in fact copied the design. However, the court held that defendants' Bromley 514 design did not infringe because its 'total concept and feel' (or 'overall aesthetic') was not the result of copying protectible elements from plaintiff's design, but instead was due to defendants' use of similar public domain elements in combination with their own original efforts.2
In comparing the two works, the district court factored out the elements of the Floral Heriz design that it deemed derived from public domain sources. The court observed that the public domain material in the Tufenkian design did not constitute protectible expression and could not form the basis of a finding of infringement, which requires a substantial similarity of protectible expression. According to the district court, the overall aesthetic of both works was predominantly derived from their common use of public domain elements. Therefore, as a matter of law, their 'total concept and feel' could not form the basis of a finding of infringement.
The Court of Appeals Reversal
In reversing the district court decision, Judge Calabresi, writing for the panel, took the opportunity to examine what he called 'Conundrums of Infringement by Inexact Copies.'3 Judge Calabresi first quoted Judge Learned Hand's admonition that ''no plagiarist can excuse the wrong by showing how much of his work he did not pirate.''4 He later repeated this maxim to emphasize that the Bromley 514 design did indeed contain 'a near-exact copy' of substantial, protectible portions of the Floral Heriz design and that the Bromley 514 was no less infringing because it contained additional matter, even if defendants' additions resulted in a different 'total concept and feel.'
Judge Calabresi also traced the Second Circuit's development of the 'total concept and feel' test for copyright infringement, noting the criticisms of its amorphous nature and the danger in using the word 'concept' as part of an infringement test. 'Concept,' after all, is a synonym for an 'idea,' which is not copyrightable. He ultimately opined that the 'total concept and feel' formulation is nevertheless sometimes useful because it
functions as a reminder that, while the infringement analysis must begin by dissecting the copyrighted work into its component parts in order to clarify precisely what is not original, infringement analysis is not simply a matter of ascertaining similarity between components viewed in isolation.5
Rather, the overall impression created by the combination of elements contained in the two works must also be considered.
This interesting discussion, however, devolved into dicta because the appellate holding was not based on whether the 'total concept and feel' of the two designs was similar, but instead upon the precise similarities of material, protectible portions of the works. In this regard, Judge Calebrisi observed that in creating the Flora Heriz, Tufenkian made numerous, original choices as to which detailed elements of the public domain designs would be included or omitted from the Floral Heriz. This constituted a sufficiently original, and thus copyrightable, selection of public domain elements under the Supreme Court's Feist decision.6 In addition, certain elements of the public domain carpet designs were modified and adapted in the Floral Heriz in more than a trivial way, thus making the modifications themselves also copyrightable. In the Bromley 514 design, the Second Circuit found that defendants copied almost exactly both the selections and the modifications made by Tufenkian. Thus, unlike the decision below, the Second Circuit's analysis did not turn on the respective 'total concept and feel' of the two designs. Rather, the infringement was based on a more conventional analysis—the unlawful appropriation of a significant amount of identifiable, protected expression. Judge Calebrisi summarized the district court's basic error as follows:
[I]n its comparison of the two rugs, the district court failed to consider - apart from total concept and feel - whether material portions, of the Bromley infringed on corresponding parts of the Heriz? ''[T]otal concept and feel should not be viewed as a sine qua non for infringement - similarity that is otherwise actionable cannot be rendered defensible simply because of a different 'concept and feel.'' (footnote omitted).7
In clarifying this limitation on the permissible uses of the 'total concept and feel' doctrine, the Second Circuit essentially endorsed the reasoning of its earlier unpublished decision in Lynx Ventures, LLC v. Miller,8 which also cited the Learned Hand 'no plagiarist' maxim in support of its conclusion that '[w]here the wholesale and verbatim copying of original text is at issue, as here, reliance on the total concept and feel test effectively immunizes the infringer who appends original material to plagiarized text.' As in Lynx Ventures, the court has now made it clear that differences in 'concept and feel' are not themselves sufficient to constitute a defense to copyright infringement.
CONCLUSION
The Tufenkian decision reminds us that there is more than one test for copyright infringement and that the tests are not mutually exclusive. Thus, there may be contexts, such as in Tufenkian, where a court must engage in a comparison of both 'total concept and feel' and of specific similarities of protectible expression before reaching a conclusion on infringement. In either case, the analysis is often difficult and elusive. Ay, there's the rub.
Copyright © 2003 Cowan, Liebowitz & Latman, P.C.
This article was published in the New York Law Journal on September 19, 2003.
Robert J. Bernstein is a partner in the New York law firm of Cowan, Liebowitz & Latman, P.C., and a frequent author and lecturer on copyright law and litigation. He is the immediate past president of the Copyright Society of the U.S.A., and formerly served as Chairman of the Copyright Law Committee of the American Intellectual Property Law Association and as a member of its Board of Directors.
Robert W. Clarida is a partner in the New York law firm of Cowan, Liebowitz & Latman, P.C., and speaks and writes frequently on copyright law. He is the co-author, with David Goldberg, of 'Recent Developments in Copyright,' a review of copyright decisions delivered each year at the annual meeting of the Copyright Society of the U.S.A., and is a Trustee of the Copyright Society and co-chair of the copyright committee of the New York State Bar Association's Intellectual Property Section.
FOOTNOTES
1 _____ F. 3d _______ (2d Cir. 2003), Docket No. 02-7623 (hereinafter 'Slip Op. at __'). One of the authors of this article, Robert W. Clarida, and the authors' firm, Cowan, Liebowitz & Latman, P.C., are counsel to plaintiff-appellant Tufenkian Import/Export Ventures, Inc.
2 Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., et al., 237 F.Supp 2d 376 (S.D.N.Y. 2002).
3 Slip Op. at 4461, Id.
4 Id. (citing Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936) (Hand, J.)).
5 Id. at 4464 (footnotes omitted) (emphasis in original).
6 Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 345 (1991).The Second Circuit expressly did not decide whether certain other selections and arrangements of elements, such as the combination of the Blau-inspired border with the altered Battilossi field, might themselves be copyrightable, but noted that 'the district court probably erred in categorically dismissing' that combination from its analysis. Slip op. at 4467, n.11.
7 Id. at 4466 (emphasis in original) (quoting 3 Nimmer on Copyright § 13.03[A][1][c].
8 64 U.S.P.Q.2d 1542 (2d Cir. 2002).