Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 1 of 22
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NEW YORK
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`BARBARA MC DONALD,
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`Plaintiff,
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`DECISION AND ORDER
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`09-CV-6357L
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`v.
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`K-2 INDUSTRIES, INC.,
`d/b/a Pavilion Gift Company,
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`Defendant.
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`________________________________________________
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`BARBARA MC DONALD,
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`Plaintiff,
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`v.
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`10-CV-6678L
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`K-2 INDUSTRIES, INC.,
`d/b/a Pavilion Gift Company, a New York Corporation,
`et al.,
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`Defendants.
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`_________________________________________________
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`INTRODUCTION
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`“In heaven an angel is nobody in particular.” ~ George Bernard Shaw
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`1
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 2 of 22
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`On earth, apparently, things are much different. In the mundane world of copyright law,
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`an angel – or at least the image of one – can be very much “particular.” This case concerns just
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`such images.
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`Plaintiff Barbara McDonald brought two actions against K-2 Industries, d/b/a Pavilion
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`Gift Company (“Pavilion”) and Zina Hocker, alleging claims for copyright infringement as well
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`as various claims under state law.
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`Based on a joint stipulation between plaintiff and defendants (10-CV-6678, Dkt. #6), the
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`Court has consolidated the two cases for all purposes (09-CV-6357, Dkt. #45; 10-CV-6678, Dkt.
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`#7).1 Defendants have filed a motion to dismiss only the amended complaint in the second
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`action, filed in 2010, 10-CV-6678, pursuant to Rule 12(b)(6) of the Federal Rules of Civil
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`Procedure (09 #38). Since both sides submitted materials outside the pleadings, the Court
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`converted the motion to a motion for summary judgment under Fed. R. Civ. Proc. 56 (09 #52).
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`FACTUAL BACKGROUND
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`Pavilion, a New York corporation, is a wholesale manufacturer of gifts and gift products
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`which are sold at retailers throughout the United States. (09 #1, &&5-7). In April 2006, plaintiff,
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`a Florida resident, entered into an Artist Letter Agreement (“Agreement”) with Pavilion,
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`pursuant to which she agreed to create and design gift items to be sold by Pavilion. The
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`Agreement referred to the items that plaintiff would create as “(Pierced Angels and Elements)
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`Name TBD” and “other designs and product as we may mutually agree in the future... .” (09 #1
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`1Subsequent docket entry references will use an abbreviated format, in the form “09 #45.” “09” signifies
`the docket for the 2009-filed action, and “10” the docket for the 2010 one. The numbers following “#” are
`references to the pertinent document number from the referenced docket.
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`2
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 3 of 22
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`at &&1,&7). The Agreement was to remain in effect “as long as Pavilion is producing and
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`promoting the product lines.” (09 #1 at &7). It is undisputed that pursuant to mutual agreement
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`between plaintiff and Pavilion, the “Pierced Angels” line was never developed, and that only the
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`“Elements” line is at issue here.
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`Under the terms of the Agreement, Pavilion agreed to pay plaintiff a royalty of seven
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`percent of the amount of Pavilion’s F.O.B. orders for Pierced Angels and Elements works or
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`other agreed-upon works designed by plaintiff. (09 #1 at &2). Plaintiff agreed that she would
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`not sell or distribute any Elements designs which had already been designed for Pavilion, or
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`similar works, for or to any third party, during or after the expiration of the Agreement. (09 #1 at
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`&9). She further agreed to “irrevocably assign” to Pavilion “all worldwide right, title, and
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`interest, including copyright,” in all Elements works or designs created by her before or after the
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`date of the Agreement. (09 #1 at &10).
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`In the 2009 action, plaintiff alleges that pursuant to the Agreement, she has provided
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`Pavilion with original designs, that Pavilion has manufactured and sold products either directly
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`taken from those designs, or based on portions of them, and that Pavilion has failed to pay her
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`the contractually required royalty. The 2009 complaint thus sets forth claims sounding primarily
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`in contract, and seeks a declaratory judgment, an accounting, compensatory damages and
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`injunctive relief. (09 #1).
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` In the 2010 action, plaintiff alleges that she owns copyrights to numerous original works
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`of art, sixty-one of which have been registered with the United States Copyright Office. Plaintiff
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`alleges that she has also submitted a copyright registration application for one additional work of
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`art. That application has been denied, but plaintiff still claims a copyright in that work. (10 #3 at
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`&& 9-11).
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`3
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 4 of 22
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`Plaintiff alleges that beginning in or about April 2006, she presented Pavilion with
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`original copyrighted works for its consideration, both as part of the Elements line and as
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`proposed non-Elements works. Pavilion accepted some of those works, but rejected others.
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`According to plaintiff, Pavilion has allegedly copied some of the “rejected” designs without her
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`consent, and has manufactured and sold (and continues to sell), products that are substantially
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`similar to plaintiff’s copyrighted works. (10 #3 at &&15-18).
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`Based on these factual allegations, plaintiff asserts four claims in the 2010 action: (1) a
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`claim for direct copyright infringement against Pavilion under 17 U.S.C. §501; (2) a claim for
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`contributory copyright infringement under §501 against defendant Zina Hocker, who is alleged
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`to be the president and chief executive officer of Pavilion; (3) a claim against Pavilion under
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`New York law for unfair competition; and (4) a claim against Pavilion under New York law for
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`unjust enrichment. Plaintiff seeks injunctive relief, as well as damages in an unspecified amount.
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`(10 #3).
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`The Court notes that defendants’ motion to dismiss (now converted to a motion for
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`summary judgment), which was filed after these actions were consolidated, addresses only the
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`claims raised in the 2010 action, and thus does not implicate any of plaintiffs’ claims in the 2009
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`action. See Aetna Cas. and Surety Co. v. Aniero Concrete Co., 404 F.3d 566, App. A at 4, n.2
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`(2d Cir. 2005) (“consolidated cases do not lose their separate identity”); Katz v. Realty Equities
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`Corp. of New York, 521 F2d 1354, 1358 (2d Cir. 1975) (“[i]t is axiomatic that consolidation is a
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`procedural device designed to promote judicial economy and that consolidation cannot [e]ffect a
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`physical merger of the actions”).
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`In support of their motion for summary judgment, defendants argue that: (1) a copyright
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`infringement claim cannot be brought as to one of the marks alleged in the complaint, because
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 5 of 22
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`that mark is unregistered; (2) as to the sixty-one registered marks, plaintiff has failed to plead, or
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`cannot establish, all the elements of a copyright infringement claim; (3) plaintiff’s works are not
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`substantially similar to Pavilion’s products; (4) plaintiff fails to state a claim for contributory
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`infringement; (5) plaintiff’s common law unfair competition claim is preempted; and (6) the
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`unjust enrichment claim is both preempted and barred by the Agreement.
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`The Court heard extensive argument on the motion to dismiss. The matter was thereafter
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`stayed for an ultimately unsuccessful attempt at mediation. On March 4, 2014, the Court issued
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`an order directing the parties to file additional submissions relative to the converted motion, in
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`the form of a “list” to include: (1) each copyright number in numerical order; (2) illustrations of
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`each protected design at issue; (3) illustrations of each allegedly infringing work (“accused
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`product”), and (4) information as to whether each design and accused product were Elements or
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`non-Elements products. (09 #70). Both parties submitted supplemental papers in response. In
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`addition to its motion to dismiss, defendants have also moved (09 #80) to strike plaintiff’s
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`second set of supplemental submissions for failure to comply with the Court’s order.
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` For the reasons that follow, defendants’ motion for summary judgment (09 #38) and
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`motion to strike (09 #80) are granted, and the 2010 amended complaint (10 #3) is dismissed in its
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`entirety, with prejudice.
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`I. General Standards
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`DISCUSSION
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`Although the Court has converted defendants’ motion to dismiss to a motion for
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`summary judgment, I note initially that “[t]here is no heightened pleading requirement applied to
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`copyright infringement claims; a claim of copyright infringement need only meet the pleading
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 6 of 22
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`requirements of Rule 8 of the Federal Rules of Civil Procedure.” Levine v. Landy, 860
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`F.Supp.2d 184, 191 (N.D.N.Y. 2012) (citing Arista Records LLC v. Doe 3, 604 F.3d 110, 119-
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`121 (2d Cir. 2010)). See also Blagman v. Apple Inc., No. 12 Civ. 5453, 2013 WL 2181709, at *3
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`(S.D.N.Y. May 20, 2013) (“[a]lthough a plaintiff must describe the acts constituting copyright
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`infringement with some specificity, copyright claims are not subject to particularity in pleading”)
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`(internal quotes omitted).
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`In short, a copyright plaintiff need not plead detailed evidence, but she must allege facts –
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`not just legal conclusions – demonstrating the existence of a facially plausible claim, i.e., that she
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`owns one or more valid copyrights that have been infringed by defendants. See, e.g., Janky v.
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`Lake County Convention and Visitors Bureau, 576 F.3d 356, 361 (7th Cir. 2009); National Bus.
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`Dev. Services, Inc. v. American Credit Educ. and Consulting Inc., 299 Fed.Appx. 509, 512 (6th
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`Cir. 2008).
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`In assessing plaintiff’s claims, then, the Court imposes no higher burden on plaintiff than
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`on any other civil litigant. Plaintiff must first state a facially valid copyright claim, and, to
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`survive a motion for summary judgment, present evidence from which a reasonable factfinder
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`could find in her favor.
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`With respect to claims of direct copyright infringement, a plaintiff must allege and
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`ultimately demonstrate, “(1) which specific original works are the subject of the copyright claim,
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`(2) that plaintiff owns the copyrights in those works, (3) that the copyrights have been registered
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`in accordance with the statute, and (4) by what acts during what time the defendant infringed the
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`copyright.” Blagman, 2013 WL 2181709, at *2 (citing Kelly v. L.L. Cool J., 145 F.R.D. 32, 35
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`(S.D.N.Y. 1992), aff’d without opinion, 23 F.3d 398 (2d Cir. 1994)). Accord Ranieri v.
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`Adirondack Dev. Group, LLC, No. 11-CV-1013, 2013 WL 1292010, at *3 (N.D.N.Y. Mar. 27,
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 7 of 22
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`2013); Ritani, LLC v. Aghjayan, 880 F.Supp.2d 425, 440 (S.D.N.Y. 2012); Kuklachev v.
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`Gelfman, 600 F.Supp.2d 437, 473 (E.D.N.Y. 2009).
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`Subsumed within the fourth element – the infringing acts – is the issue of substantial
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`similarity. See Peter F. Gaito Architecture, LLC v. Simone Development Corp. (“Gaito”), 602
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`F.3d 57, 63 (2d Cir. 2010) (“[i]n order to establish a claim of copyright infringement, a plaintiff
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`with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff’s
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`work; and (2) the copying is illegal because a substantial similarity exists between the
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`defendant’s work and the protectable elements of plaintiff’s”) (internal quotation marks omitted).
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`As in many copyright cases, it is on that fourth element that the resolution of this motion
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`depends. Plaintiff has identified numerous copyrights upon which the defendants have allegedly
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`infringed, but the primary question before the Court is whether a reasonable trier of fact could
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`find that the accused products bear substantial similarity to the protectable portions of plaintiff’s
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`designs.
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`In that regard, the requirement that the plaintiff identify both the allegedly infringed
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`works and the infringing acts does not necessarily mean that the plaintiff must identify, element
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`by element, precisely which features are the same or similar between plaintiff’s designs and the
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`defendant’s products. The Second Circuit has expressly rejected such an analysis, stating that
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`“[t]he standard test for substantial similarity between two items is whether an ordinary observer,
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`unless he set out to detect the disparities, would be disposed to overlook them, and regard [the]
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`aesthetic appeal as the same.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir.
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`2001) (internal quotation marks omitted). “In applying the so-called ‘ordinary observer test,’
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`[the court] ask[s] whether ‘an average lay observer would recognize the alleged copy as having
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 8 of 22
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`been appropriated from the copyrighted work.’” Gaito, 602 F.3d at 66 (quoting Knitwaves, Inc.
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`v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995) (internal quotation marks omitted). On
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`occasion, “[w]hen a work incorporates both unprotected and protected elements,” the Second
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`Circuit has applied “a ‘more discerning observer’ test, which requires ‘substantial similarity
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`between those elements, and only those elements, that provide copyrightability to the allegedly
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`infringed [work].’” Belair v. MGA Entertainment, Inc., 503 Fed.Appx. 65, 66 (2d Cir. 2012)
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`(unpublished opinion) (quoting Boisson v. Banian, Ltd., 273 F.3d 262, 272 (2d Cir. 2001)
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`(internal quotation marks omitted)).
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`Regardless of which test is applied, however, the Second Circuit has “disavowed any
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`notion that [a court is] ‘required to dissect [the works] into their separate components, and
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`compare only those elements which are in themselves copyrightable.’” Gaito, 602 F.3d at 66
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`(quoting Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 133 (2d
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`Cir. 2003)). Rather, in determining the issue of substantial similarity, the court should be
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`“principally guided by comparing the contested design’s ‘total concept and overall feel’ with that
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`of the allegedly infringed work . . . in the end, [the] inquiry necessarily focuses on whether the
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`alleged infringer has misappropriated the original way in which the author has ‘selected,
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`coordinated and arranged’ the elements of his or her work.” Gaito, 602 F.3d at 66 (internal
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`quotation marks and citations omitted). As such, the ultimate test of a copyright claim boils
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`down to a reasoned application of “common sense.” Gordon v. McGinley, 502 Fed.Appx. 89, 90
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`(2d Cir. 2012) (“[w]hether the ‘ordinary observer’ test or the ‘more discerning observer’ test is
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`employed, the copyright infringement analysis involves a ‘common sense’ determination, based
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`solely on the works themselves, as to whether the allegedly infringing work is substantially
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 9 of 22
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`similar to the copyrighted work, focusing on ‘total concept and overall feel’”) (quoting Gaito,
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`602 F.3d at 66).
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`Admittedly, as the Second Circuit has observed, the “test for infringement of a copyright
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`is of necessity vague,” Gaito, 602 F.3d at 63 (internal quotation marks omitted), and “presents
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`one of the most difficult questions in copyright law...” Id. (quoting 4-13 Nimmer on Copyright
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`§13.03 (2009)). “For that reason, and because the question of substantial similarity typically
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`presents an extremely close question of fact, questions of non-infringement have traditionally
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`been reserved for the trier of fact.” Id. (citation omitted).
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`Nevertheless, there are circumstances where district courts may (and routinely do) decide
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`the issue of substantial similarity as a matter of law. “[W]here, as here, the works in question are
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`[submitted to the court], the district court may consider the similarity between those works in
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`connection with a motion to dismiss, because the court has before it all that is necessary in order
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`to make such an evaluation.” Klauber Brothers, Inc. v. The Bon-Ton Stores, Inc., 557 Fed.Appx.
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`77, 80 (2d Cir. 2014) (internal quotation marks omitted) (unpublished opinion). Once the works
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`are evaluated and compared, summary judgment is appropriate if the visual similarity between
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`the copyrighted and accused works “concerns only non-copyrightable elements of the plaintiff’s
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`work, or [if] no reasonable jury, properly instructed, could find that the two works are
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`substantially similar.” Gaito, 602 F.3d at 63. See also Belair, 503 Fed.Appx. at 66-67 (“it is
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`‘entirely appropriate’ for a district court to resolve the question of substantial similarity as a
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`matter of law”) (quoting Gaito, 602 F.3d at 63-64).
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 10 of 22
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`II.
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`Defendants’ Motion to Strike
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`It was to facilitate the kind of side-by-side comparison required for assessment of the
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`“substantial similarity” question that the Court issued its March 4, 2014 Order (09 #70) asking
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`the parties to each present, in the form of a list or chart, information concerning the copyrights,
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`designs, and products at issue. (Although an assortment of images of the copyrighted designs
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`and accused products was already before the Court, those images had not been organized into a
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`particularly clear or useful form.) In response, defendants submitted a detailed chart, over 250
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`pages in length, listing each of the copyrights, designs, and products at issue, complete with
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`pictures of each copyrighted design and accused product, and information as to whether each
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`subject design and product had been submitted or produced as part of the Elements line. (09
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`#72-1–#72-13).
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`In contrast, plaintiff submitted a collection of over 600 pages representing copies of the
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`copyright filings at issue, along with photographs of various catalog pages advertising
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`defendants’ products and other pieces of documentary evidence, such as correspondence. (09
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`#73-#79). None of the information is organized into a list or chart, some of the products accused
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`in some claims appear to have been changed without explanation, and to the extent that the
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`majority of plaintiff’s claims involve allegations that accused products simultaneously infringed
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`on aspects of multiple designs, it is unclear which of the many depicted designs are copyrighted
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`separately, if in fact they are copyrighted at all.
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`Overall, plaintiff’s submission has frustrated the Court and has obfuscated the issues,
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`rather than assisting the Court in understanding the nature and breadth of plaintiff’s claims,
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`especially as to the key issue of “substantial similarity.” Defendants have moved to strike
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 11 of 22
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`plaintiff’s second supplemental submissions on that basis, and the Court concurs. Plaintiff’s
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`second set of supplemental submissions in opposition to the defendants’ motion for summary
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`judgment (9 #73, #74, #75, #76, #77, #78, and #79) is accordingly stricken. The Court notes that
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`even assuming arguendo that plaintiff’s submissions were considered, they are so confounding,
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`and contain so little material of clear relevance, that they would do nothing to advance plaintiff’s
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`claims or to counter the instant motion for summary judgment.
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`III. Defendants’ Motion For Summary Judgment
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`Plaintiff’s copyright claims can be broken down into two main categories. The first of
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`these includes works that plaintiff allegedly submitted for consideration outside the Elements
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`line. Plaintiff alleges that Pavilion has produced these products (some as part of the Elements
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`line, and others
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`in other
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`lines) without her approval and/or without compensation.
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`See McDonald Supp. Decl., 10 #57 at &13.
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`Second, plaintiff alleges that Pavilion purported to reject some works that she submitted
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`for the Elements line, but then used those works, or substantially similar works, nonetheless. See
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`McDonald Supp. Decl., 10 #57 at &17. Plaintiff alleges that since Pavilion “rejected” those
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`works, she never relinquished her copyright in them.
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`To the extent that Pavilion sold works that were both submitted by plaintiff as Elements
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`designs, and produced as Elements products by Pavilion, I note that those claims are clearly
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`governed by the Agreement, and that plaintiff has no copyright claim as to them. Plaintiff
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`“irrevocably assign[ed]” to Pavilion “all worldwide right, title, and interest, including
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`copyright,” in all such works and designs. (09 #1 at 10, &10.) Plaintiff may be able to recover
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`damages under the Agreement, if Pavilion has failed to pay her the royalties it requires, but her
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`claims that exclusively involve Elements designs and products (specifically, her claims
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 12 of 22
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`pertaining to Copyright Numbers 4, 18, 26, 32, and 39)2 are properly decided under plaintiff’s
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`2009 complaint sounding in contract, and not as copyright claims. Those claims are therefore
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`dismissed.3
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`The defendants also move to dismiss a number of plaintiff’s claims for which she
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`identifies a copyright, but fails to specify or accuse a single allegedly-infringing product
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`(Copyright Numbers 8, 36, 42 and 55). Because plaintiff has failed to allege and/or offer
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`evidence that the defendants produced any infringing products relative to these copyrights,
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`summary judgment is appropriate on those claims as well, and they are dismissed from the 2010
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`amended complaint.
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`With regard to plaintiff’s remaining claims of copyright infringement, the Court has
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`undertaken a painstaking, side-by-side comparison and analysis of plaintiff’s copyrighted
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`designs and the accused products, and has made individualized findings of fact with regard to
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`each of the subject copyright claims, a summary of which is annexed as Exhibit A, and
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`incorporated herein by reference. Upon a careful and detailed review of the evidence of record, I
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`find that even applying the most lenient available standard, that of the “ordinary observer,” no
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`reasonable trier of fact could find that any of the accused products are “substantially similar” to
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`the plaintiff’s copyrighted designs.
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`2 For the sake of clarity, the Court will refer to each of the 62 claimed copyrights at issue using the reference
`numbers assigned by the July 31, 2013 declaration of Carla Ford, and utilized by the parties in subsequent filings.
`(09 #54-3 and exhibits thereto). Exhibit A, annexed hereto, contains a chart which lists both the reference numbers,
`and the actual copyright (or application) numbers, for each of the claimed copyrights.
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` Defendants urge the Court to find that the Agreement’s assignment of copyrights embraces all claims involving
`products that were designed for the Elements line and allegedly produced as part of another line, and those allegedly
`designed outside of the Elements line, but produced under it. (09 #92 at 5-6). For purposes of the instant motion,
`and in the interest of construing all inferences in plaintiff’s favor and addressing her claims on the merits, I decline
`to interpret the Agreement so expansively at this juncture, and will assume arguendo that claims involving designs
`(or combinations of designs) and products (or combinations of products) which do not fall entirely within the
`Elements line, should proceed to a “substantial similarity” comparison analysis.
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 13 of 22
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`Initially, I note that the overwhelming majority of plaintiff’s copyrighted designs
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`represent her expression of a “basic idea” (or combination of basic ideas) well-known in the
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`public domain, such as a red cardinal, a tree, a rose, an angel in the form of a winged woman, a
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`Santa Claus figure in a red suit, a “three-ball” snowman, a heart shape, a cruciform (cross) shape,
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`paisley patterns, stripe patterns, and decorative scrollwork. It is well settled that basic ideas are
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`not protectable by copyright. “It is an axiom of copyright law that the protection granted to a
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`copyrightable work extends only to the particular expression of an idea and never to the idea
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`itself.” Reyher v. Children’s Television Workshop, 533 F.2d 87, 90 (2d Cir. 1976) (emphasis
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`added). As such, traditional or quasi-natural depictions of ideas such as animals, angels,
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`snowmen, or holiday-themed images and verbiage like holly berries and the word “joy,” are not
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`protectable ideas. Id. See Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 500 (2d Cir.
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`1982) (“[b]earing in mind the traditional characteristics of all snowmen, we find no error in [the
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`lower court’s] conclusion that any similarity between [stuffed toy snowmen] would appear to the
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`ordinary observer to result solely from the fact that both are snowmen”); Herbert Rosenthal
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`Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64, 65 (2d Cir. 1974) (copyright protection does
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`not extend to the idea of a gold turtle pin with an oval cluster of gems conforming to the normal
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`shape of a turtle’s back, “[s]ince all turtles are created more or less along the same lines”); Great
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`Importations, Inc. v. Caffco International, Inc., 1997 U.S. Dist. LEXIS 10700 at *11-*12
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`(S.D.N.Y. 1997) (the combination of angels, holly, and the letters of the word “joy” as
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`“Christmas appurtenances” is not protectable: similarly, the “stereotypical attributes of baby
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`angels or cupids” such as round cheeks, smiling or bemused expressions, and the wearing of
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`loose robes or drapery, follow a “common theme” which is not protectable). See generally
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`Lapine v. Seinfeld, 375 Fed.Appx. 81, 83 (2d Cir. 2010) (an idea cannot be copyrighted); New
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 14 of 22
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`York Mercantile Exchange, Inc. v. IntercontinentalExchange, Inc., 497 F.3d 109, 116 (2d Cir.
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`2007) (“[i]t has been long accepted that copyright protection does not extend to ideas; it protects
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`only the means of expression employed by the author”) (internal quotation marks omitted).
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`Thus, it is only plaintiff’s particular expression of the basic ideas she employs – the
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`original and artistic way in which she has chosen to select, combine, arrange and represent them
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`– that is protectable. See Gaito, 602 F.2d at 66. See also Cameron Industries, Inc. v. Mother’s
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`Work, Inc., 338 Fed.Appx. 69, 70 (2d Cir. 2009) (equating “protectable” with “artistic” aspects
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`of a work); Boisson v. Banian, Ltd., 273 F.3d 262, 268 (2d Cir. 2001) (protection extends only to
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`a work that is “original to the author,” meaning “a work that comes from the exercise of the
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`creative powers of the author’s mind”).
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`In addition to claiming infringement with regard to her expression of a number of basic
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`ideas, plaintiff also attempts to assert “aggregated” copyright claims. Specifically, plaintiff
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`contends that the defendants infringed on her protected work, not by replicating designs from a
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`single copyright, but by “cherry picking” various elements from several different copyrighted
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`designs, and then cobbling them together, often resulting in a product with an entirely different
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`form or intended purpose than plaintiff’s designs, but which, according to plaintiff, nonetheless
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`infringes upon the several unrelated designs as a whole.
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`Plaintiff presents no authoritative case law supporting her theory that such allegations of
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`aggregated copyright infringement are cognizable. To the contrary, “nothing in the Copyright
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`Act of 1976 (which refers to the infringed ‘work’ in the singular) or in the precedents of [the
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`Second] Circuit supports the view that a plaintiff’s entire oeuvre [(body of work)], or even an
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`aggregated portion of it, may be used as the point of comparison [against an allegedly infringing
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`product] where the works included [in plaintiff’s body of work or aggregated portion of it] bear
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 15 of 22
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`little or no relation to one another…” Kroencke v. General Motors Corp., 270 F. Supp. 2d 441,
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`444 (S.D.N.Y. 2003) (dismissing copyright claim by plaintiff who alleged that defendant’s
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`graphic art infringed upon seven different works by plaintiff, by imitating details of their human
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`subjects such as poses, hands, shoes, and eyelashes) (emphasis added).
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`Indeed, since it is well settled that copyright protection for basic ideas is intended to
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`safeguard the particular way in which an artist “selected, coordinated and arranged” the elements
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`of a work, Gaito, 602 F.2d at 66, it is difficult to imagine how plaintiff’s allegations that the
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`defendants infringed upon her copyrighted works by means of “selecting” minor elements of
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`multiple unrelated copyrighted works, and then “coordinating” and “combining” them into
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`something completely different from any of her designs, could possibly establish a claim for
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`infringement. As such, I note that plaintiff’s attempt to rely on the aggregation of discrete
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`fragments of multiple, unrelated and dissimilar copyrighted works in order to demonstrate
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`overall “substantial similarity” of accused products is not tenable in the first instance.
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`Furthermore, even assuming arguendo that plaintiff’s aggregated copyright infringement
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`claims (which comprise the vast majority of her allegations) could be properly considered along
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`with her “standalone” infringement claims involving a single copyrighted design, the accused
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`products nonetheless lack substantial similarity to plaintiff’s copyrighted works. In order to
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`grant plaintiff the benefit of every favorable inference, the Court has included plaintiff’s
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`aggregated or fragmented copyright infringement claims in its individualized analysis of the
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`copyrights and accused products at issue, and has concluded with regard to each that any alleged
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`similarity concerns only non-copyrightable, “basic idea” elements of the plaintiff’s work, and/or
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`that no reasonable, properly-instructed jury could find that the accused works are substantially
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`similar to plaintiff’s designs. See Exhibit A.
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`Case 6:10-cv-06678-DGL Document 9 Filed 06/10/15 Page 16 of 22
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`Discussion of some representative claims illustrates the point. For example, in several of
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`her contentions, plaintiff alleges that one particular Pavilion product (a tiered pedestal, anchoring
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`a stylized three-dimensional tree made up of spiraling wire branches, decorated with 5-petaled
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`blossoms, leaves, a nest with eggs, and figures of a cardinal, a chickadee and another bird)
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`infringes on at least four different copyrights, for: (1) Victorian-style floral artwork of roses,
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`vines, lilies, insects and 5-petaled blossoms and leaves (Copyright Number 7, 10 #3-1 at 54-55);
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`(2) a design for an avian-themed candleholder, consisting of a portion of a tree limb, upon which
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`rests a nest-shaped votive holder and a bird figurine (Copyright Number 31, 10 #3-2 at 7-8); a
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`design for a minimalist, bare-branched “Charlie Brown”-style Christmas tree decorated with a
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`star and round ball ornaments (id.); a holiday ornament comprised of a Christmas wreath with a
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`sleigh bell suspended in the center, with the figure of a bird perched on top (id.); a tiered pedestal
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`taper candleholder (Copyright Number 37, 10 #3-2 at 15-16); greeting card art showing a holly
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`wreath, decorated with poinsettia flowers, with a chickadee perched on a branch in the center of
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`the wreath (Copyright Number 17, 10 #3-1 at 62-63); and additional sketches of birds and
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`arabesques (spirals) which are not a readily-apparent part of any copyrighted material, but which
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`the Court assumes arguendo are protected.
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`Notwithstanding plaintiff’s claim that the Pavilion tree infringes on her copyrighted
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`designs for images of 5-petaled blossoms, pedestal candlesticks, spiral shapes, birds, and a tree,
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`each of these concepts are “basic ideas” which are not, by themselves, protectable. See generally
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`Eden Toys, Inc., 675 F.2d 498 at 500.
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`It is manifest on visual inspection that the accused Pavilion tree does not reproduce the
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`subject matter or composition of any of plaintiff’s