Opinion
CIVIL ACTION NO. 03-10332-GAO
September 16, 2003
MEMORANDUM AND ORDER
Inkadinkado, Inc. ("Inkadinkado") seeks a declaratory judgment that it has not infringed Jill Meyer's trademark or copyrights. Counterclaiming, Meyer asserts that the company has (1) breached its licensing agreement with her; (2) infringed her copyright in her original artwork in violation of 17 U.S.C. § 504; (3) engaged in unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a); (4) engaged in unfair competition in violation of common law principles; (5) caused dilution of Meyer's trademark and harm to her business reputation; and (6) engaged in unfair business practices in violation of Mass. Gen. Laws. ch. 93 A. Meyer has moved for a preliminary injunction to prohibit Inkadinkado from reproducing and distributing allegedly infringing collages. Inkadinkado has moved to dismiss Count II of the counterclaim, which alleges copyright infringement.
I. Background
Inkadinkado, based in Woburn, Massachusetts, produces rubber stamps that are used by collectors, artists, and designers. Meyer, an independent artist who lives and works in Studio City, California, entered into a non-exclusive Licensing Agreement ("Agreement") with Inkadinkado on August 1, 2001, pursuant to which Meyer would, in exchange for licensing fees, provide certain artwork and designs to Inkadinkado to be incorporated in its products. Generally speaking, Meyer created the relevant artwork and designs by collecting, arranging, and modifying images and backgrounds from sources in the public domain, including copyright-free clip-art from the Internet. Meyer claims that her collages qualify for copyright protection as "compilations." See 17 U.S.C. § 101 (defining "compilation").
Meyer sent designs to Inkadinkado, and in 2002 Inkadinkado produced and widely distributed a catalog advertising decorative rubber stamps called "Galerie Vernissage," which included stamps embodying Meyer's designs. In accordance with the parties' agreement, Meyer received royalty payments from Inkadinkado for the sale of her products.
In November 2001, Meyer sent Inkadinkado a digital file collection of images she called "ABOUT FACE." Meyer asserts that she told Inkadinkado that she planned to use "ABOUT FACE" as a trademark and that she did in fact use it as a trademark.
In the fall of 2002, Inkadinkado issued its 2003 catalog, "Stamp Scrapbook." The new catalog did not include any of Meyer's designs. It did, however, use the mark "ABOUT FACE" to advertise a line of rubber stamps. Inkadinkado says that it did so only after a search with the U.S. Patent and Trademark Office (USPTO) discovered no conflicting use of the "ABOUT FACE" mark. There are approximately 10,000 copies of Inkadinkado's 2003 catalog in circulation.
Besides the "ABOUT FACE" controversy, Meyer claims that some of her collage designs were copied by Inkadinkado for rubber stamp designs advertised in the 2003 catalog. Inkadinkado responds that the collage-image stamps in its 2003 catalog were independently created by other artists.
On October 16, 2002, Meyer terminated her Agreement with Inkadinkado as permitted by a termination clause. In accordance with the Agreement, Inkadinkado may continue for a one-year period (in other words, until October 16, 2003) to "sell off" its inventory of stamps that incorporate Meyer's designs. It has been doing so, and it has been paying Meyer on a quarterly basis for sales of products that it acknowledges contain her designs.
On February 20, 2003, Inkadinkado filed its complaint for a declaratory judgment that it had not infringed Meyer's "ABOUT FACE" trademark or artwork. Before it did so, Inkadinkado applied to register "ABOUT FACE" as a trademark. On March 27, 2003, Meyer filed her answer and counterclaim. On March 28, 2003, Meyer filed an application to register a copyright in her collage designs. As of the date of the hearing of these matters, no copyright registration had issued.
II. Discussion
A. Meyer's Motion for a Preliminary Injunction
Meyer has not shown a reasonable likelihood of success on her infringement claims. First, she has not yet established that she owns a valid copyright entitled to protection. Although Meyer has applied for copyright protection for her collages, so far as appears no action has yet been taken on her application. See discussioninfra Part II.B.More fundamentally, her claims for infringement are frail. Meyer must prove that Inkadinkado copied her original work so extensively that an ordinary reasonable person would conclude that the alleged copy was unlawfully appropriated from her work. Yankee Candle Co. v. Brideewater Candle Co, 259 F.3d 25.33 (1st Cir. 2001) (citingConcrete Mach. Co. v. Classic Lawn Ornaments. 843 F.2d 600, 607 (1st Cir. 1988)).
In evaluating the originality of a design, courts consider both the specific elements of the design as well as its "total concept and feel."See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003-04 (2d Cir. 1995) (infringement found where competitor, in producing sweaters with almost identical "look and feel," used the same felt appliques of squirrels and leaves, with virtually the same color schemes, and on strikingly similar backgrounds); Aaron Basha Corp. v. Felix B. Vollman. Inc., 88 F. Supp.2d 226, 232 (S.D.N.Y. 2000) (summary judgment granted for defendant where companies' competing baby-shoe pendants, though similarly decorated with precious gemstones, metals, and enamel, differed in shape, proportion, and size, and were different in concept and feel); Kerr v. New Yorker Magazine. Inc., 63 F. Supp.2d 320, 325 (S.D.N.Y. 1999) (summary judgment for defendant where the parties each published drawings of figures with Mohawk haircuts in the shape of New York City skyline, but they each had a different feel — i.e. one drawing was executed in pen and ink, with the figure in three-quarters profile, and both eyes meeting the viewers' eyes, while the other was drawn in color, in true profile, with the one eye looking down away from the viewer).
Meyer admits that she took constituent parts of her collage designs from the public domain, but she claims her work is copyrightable as a "compilation." As defined by the Copyright Act, a compilation is "a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101. The threshold of originality is quite low for compilations. Feist Publ'ns. Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358-59 (1991). But the copyright protection provided is correspondingly thin, guarding against only "virtually identical copying" of the artist's original contribution to ideas already in the public domain. Satava v. Lowry. 323 F.3d 805, 812 (9th Cir. 2003).
In Folio Impressions. Inc. v. Byer California. 937 F.2d 759 (2d Cir. 1991), the plaintiff registered a copyright in a fabric design, which was created by cutting out a sharp, clear photocopied image of a rose, pasting it on a background taken from the public domain, and repeating the process to create a pattern. Folio. 937 F.2d at 762-63. One of the defendants, after studying Folio's design, created a new design by randomly "tossing" together a variety of rose images, photocopied in soft focus and arranged on a background very similar to the one used by Folio. Id. at 766. The Second Circuit, applying a "more discerning 'ordinary observer' test," concluded that even if defendants had copied Folio's work, the competing designs were not "substantially similar." Id. Rather, the Court determined that both patterns were originals, and Folio's suit for infringement failed.Id.
So, although the rules may favor Meyer's chances of obtaining a valid copyright in her compilations, those same rules make it unlikely that she will succeed at prosecuting her infringement action against Inkadinkado.
Meyer has also failed to show that she is likely to suffer irreparable harm without an injunction. She seeks monetary damages for the alleged infringement of her work. If she should prevail, then Inkadinkado will be required to pay appropriate damages.
Additionally, the balance of hardship favors Inkadinkado. It appears that Inkadinkado's product catalog is a predominant means of marketing its products, and the catalog advertises much more than the allegedly infringing designs. Enjoining the distribution of that catalog would place a substantial restriction on the marketing of clearly non-infringing designs, imposing a harm on Inkadinkado disproportionate to the benefit an injunction could provide to Meyer.
For these reasons, Meyer has not made a sufficient showing that a preliminary injunction ought to be issued, and her motion for such relief is denied.
B. Inkadinkado's Motion to Dismiss Count II of Meyer's Counterclaim for Copyright Infringement
Section 411(a) of the Copyright Act provides: "[N]o action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a). Inkadinkado moves the Court to dismiss Meyer's counterclaim for copyright infringement pursuant to Fed.R.Civ.P. 12(b)(1) and 12(b)(6) because, as of the date of the "institution" of the infringement claim, Meyer's copyrights had not been registered, though the application had been filed.
It appears uncontroverted that the infringement claim was brought before registration, and therefore Inkadinkado's motion is well grounded. The claim must be dismissed in accordance with Section 411(a). After registration issues, if it does, Meyer may move for leave to amend the counterclaim to add an infringement claim.
III. Conclusion
For the foregoing reasons, Count II of the counterclaim is dismissed without prejudice. Meyer's motion for preliminary injunction is denied.
It is SO ORDERED.