IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF NORTH CAROLINA
`CHARLOTTE DIVISION
`3:21CV633-GCM
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`JACQUELINE S. MCFEE,
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`Plaintiff,
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`vs.
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`CAROLINA PAD, LLC,
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`Defendant.
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`______________________________)
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`ORDER
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`This matter is before the Court upon Defendant’s Motion for Summary Judgment (Doc.
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`No. 64) and Plaintiff’s Motion for Partial Summary Judgment Dismissing Eight Affirmative
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`Defenses and Establishing the Infringer’s Profits (Doc. No. 66). Both Motions are fully briefed
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`and ripe for disposition, and oral argument was held on November 7, 2023.
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`I.
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`FACTUAL BACKGROUND
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`This is an action for copyright infringement. Plaintiff Jacqueline McFee (“McFee”) was
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`part-owner, lead designer, and the Vice-President of Creative for CPP International, LLC
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`(“CPP”) for fifteen years, from 2001 through 2015. CPP was a wholesale distributor of stationery
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`and office supplies. McFee and other CPP designers created designs that CPP printed on back-to-
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`school products, including stationery, notebooks, and related goods. While employed by CPP,
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`McFee created the seven designs at issue in this lawsuit: Black and White Floral, In the Navy,
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`Kaleidoscope, Hot Chocolate, Pattern Play, Malibu, and Malibu Paisley. McFee has an existing
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`copyright registration for the Black and White Floral design, but at the time she filed her original
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`Complaint, the remaining designs only had copyright applications.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 1 of 14
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`After CPP ceased operations, some of its assets, including intellectual property, were sold
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`to Bay Sales, LLC. Defendant Carolina Pad, LLC (“Carolina Pad”) was formed in March of
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`2019. Like CPP, Carolina Pad sells school and office supplies, including stationery, notebooks,
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`folders, notepads, pocket organizers, and related products. Carolina Pad’s products are arranged
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`by thematic “collections,” which include complementary designs on a line of products, and are
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`sold to various retailers (e.g., Staples, Target) to be resold to consumers. Bay Sales, LLC and
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`Carolina Pad share the same owners. In addition, some of the designers and other employees that
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`worked at CPP were hired by Carolina Pad.
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`McFee filed this lawsuit alleging that certain of Carolina Pad’s designs infringe upon
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`seven of her designs.1 Carolina Pad has moved for summary judgment, arguing primarily that
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`McFee’s designs and those of Carolina Pad are not substantially similar. McFee seeks summary
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`judgment as to eight of Carolina Pad’s affirmative defenses. Should Carolina Pad be liable for
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`copyright infringement, McFee also seeks to establish that its total profits are the correct measure
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`of damages, without any deductions for expenses.
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`II.
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`DISCUSSION
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`A. Summary Judgment Standard
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`Courts must grant summary judgment for the moving party “if the movant shows that
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`there is no genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law.” Fed. R. Civ. P. 56. A factual dispute is considered genuine “if the evidence is
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`such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 248 (1986). “A fact is material if it might affect the outcome of the
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`1 In her summary judgment briefing Plaintiff has dropped consideration of her “Pattern Play” design and appears not
`to pursue her infringement claim as to this particular design.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 2 of 14
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`suit under the governing law.” Vannoy v. Federal Reserve Bank of Richmond, 827 F.3d 296, 300
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`(4th Cir. 2016) (quoting Libertarian Party of Va. v. Judd, 718 F.3d 308, 313 (4th Cir. 2013)).
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`The party seeking summary judgment bears the initial burden of demonstrating the
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`absence of a genuine issue of material fact through citations to the pleadings, depositions,
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`answers to interrogatories, admissions or affidavits in the record. See Celotex Corp. v. Catrett,
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`477 U.S. 317, 323 (1986); Bouchat v. Baltimore Ravens Football Club, Inc., 346 F.3d 514, 522
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`(4th Cir. 2003). “The burden on the moving party may be discharged by ‘showing’…an absence
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`of evidence to support the nonmoving party’s case.” Celotex, 477 U.S. at 325. Once this initial
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`burden is met, the burden shifts to the nonmoving party. The nonmoving party “must set forth
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`specific facts showing that there is a genuine issue for trial.” Id. at 322. The nonmoving party
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`may not rely upon mere allegations to defeat a motion for summary judgment. Id. at 324.
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`Although a court must view the evidence and any inferences from the evidence in the
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`light most favorable to the nonmoving party, “[w]here the record taken as a whole could not lead
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`a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.” Tolan
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`v. Cotton, 572 U.S. 650, 657 (2014); see also Anderson, 477 U.S. at 255; Ricci v. DeStefano, 557
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`U.S. 557, 586 (2009) (citations omitted). Only disputes over facts that might affect the outcome
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`of the suit under the governing law will properly preclude the entry of summary judgment.
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`Anderson, 477 U.S. at 248; Hatley v. City of Charlotte, 826 F. Supp. 2d 890, 896 (W.D.N.C.
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`2011). “Factual disputes that are irrelevant or unnecessary will not be counted.” Anderson, 477
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`U.S. at 248. Also, the mere argued existence of a factual dispute does not defeat an otherwise
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`properly supported motion. Id. If the evidence is merely colorable, or is not significantly
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`probative, summary judgment is appropriate. Id. at 249-50.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 3 of 14
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`B. Substantial Similarity
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`To state a claim for copyright infringement, a plaintiff must allege: (1) ownership of a
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`valid copyright, and (2) copying of the original elements of the work by the defendant. Feist
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`Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 361 (1991); Humphreys &
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`Partners Architects, L.P. v. Lessard Design, Inc., 790 F.3d 532, 537 (4th Cir. 2015), as amended,
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`(June 24, 2015). Where, as here, a plaintiff possesses no direct evidence that the defendant
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`copied a protected work, the plaintiff “may prove copying by circumstantial evidence in the form
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`of proof that the alleged infringer had access to the work and that the supposed copy is
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`substantially similar to the author’s original work.” Humphreys & Partners Architects, L.P., 790
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`F.3d at 537 (emphasis added).
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`Substantial similarity is a two-pronged test. Id. at 537-38. The plaintiff must show that
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`the two works are (1) extrinsically similar; and (2) intrinsically similar. Id. (emphasis added).
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`The extrinsic inquiry is objective and looks to “external criteria” of “substantial similarity
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`between the alleged copy and the protected elements of the copyrighted work.” Id. The intrinsic
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`inquiry implicates the perspective of the work’s intended observer and “looks to the ‘total
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`concept and feel of the works.’” Id. (internal citation omitted).
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`The “substantial similarity” test varies according to the circumstances of the case. 4
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`Nimmer on Copyright § 13.03 (2023). When copyrights reflect “only scant creativity,” more
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`similarity is required. See id. (“More similarity is required when less protectible matter is at
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`issue.”); Zalewski v. T.P. Builders, Inc., 754 F.3d 95, 102 (2d Cir. 2014) (affirming grant of
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`summary judgment in defendant’s favor on copyright claim because works at issue were not
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`substantially similar and explaining that courts must be more discerning of differences between
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`two works when copyrighted work involves little originality).
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 4 of 14
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`To the extent works with little creativity are protected by copyright, courts refer to those
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`designs as having “thin” copyrights because they are entitled to only scant, or thin, protection.
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`See 4 Nimmer on Copyright § 13.03 (2023) (citing Feist Publ’ns, Inc., 499 U.S. at 349). “[I]f
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`substantial similarity is the normal measure required to demonstrate infringement,
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`‘supersubstantial’ similarity must pertain when dealing with ‘thin’ works.” Building Graphics,
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`Inc. v. Lennar Corp., 866 F. Supp. 2d 530, 544 (W.D.N.C. 2011) (quoting Transwestern Pub.
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`Co. LP v. Multimedia Mktg. Assocs., 133 F.3d 773, 776-77 (10th Cir. 1998)); see also Intervest
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`Const., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914, 921 (11th Cir. 2008) (affirming
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`grant of summary judgment on copyright claim in favor of defendant because works at issue
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`were not similar enough to fulfill the “narrower scope of protection available” required when
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`original work has only “thin” protection).
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`For purposes of this motion, the Court will assume that Defendant had access to
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`Plaintiff’s designs through shared corporate history and overlapping employees. However, to
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`avoid summary judgment, Plaintiff must still clear the hurdle of extrinsic substantial similarity of
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`the designs. The Court may conduct its own review of the works at issue and determine whether
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`the works are substantially similar. See Eaton v. National Broadcasting Co., 972 F. Supp. 1019,
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`1023, 1027 (E.D. Va. 1997), aff’d, 145 F.3d 1324 (4th Cir. 1998) (granting summary judgment
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`in defendant’s favor on copyright claim because there was no substantial similarity between two
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`works at issue and noting that summary judgment motions are “routinely” granted in copyright
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`cases); Building Graphics, 866 F. Supp. 2d at 544 (conducting comparison of architectural works
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`at issue, listing differences between them, and ultimately dismissing plaintiff’s copyright claims
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`at summary judgment stage).
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 5 of 14
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`The designs at issue herein consist of stripes, polka dots, and flowers. The United States
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`Copyright Office has made it clear that copyright protection does not extend to “familiar symbols
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`or designs.” U.S. Copyright Office, Copyright Circular 33 at § 313.4(J); 37 C.F.R. § 202.1. Only
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`the particular arrangement of the stripes, colors, and patterns, taken as a whole, may perhaps be
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`subject to protection, and only then, as a “thin” copyright in which more than substantial
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`similarity to an allegedly infringing design must be shown. Polka dots, stripes and flowers are
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`used commonly as designs on products of nearly every kind, and there are only so many
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`variations of these designs. See, e.g., Mattel, Inc. v. MGA Entm’t, Inc., 616 F.2d 904, 914 (9th
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`Cir. 2010) (explaining that “[i]f there’s only a narrow range of expression (for example, there are
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`only so many ways to paint a red bouncy ball on blank canvas), then copyright protection is
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`‘thin’ and a work must be ‘virtually identical’ to infringe.”). In Hennon v. Kirklands, Inc., 870 F.
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`Supp. 118 (W.D. Va. 1994), aff’d, 64 F.3d 657 (4th Cir. 1995), the court rejected a claim of
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`substantial similarity between Christmas caroler figurines, finding that they were not
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`substantially similar because there are only so many ways to create a Christmas caroler figurine.
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`The court recognized that “similarities between the carolers are to a great extent dictated by the
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`subject matter that the works portray.” Id. at 121. The court noted that “the fact that the same
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`subject matter may be present in two [works] does not prove copying or infringement.” Id.
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`(citation omitted).
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`C. Comparison of the Designs
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`With the foregoing principles in mind, the Court will examine each of Plaintiff’s designs
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`at issue and compare them to Defendant’s allegedly infringing design.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 6 of 14
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`1. Black and White Floral
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`McFee’s Black and White Floral (Doc. No. 47-
`2)
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`Carolina Pad’s One Hip Chick (Doc. No. 63-6, p.
`3)
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`McFee’s Black and White Floral design contains a two-tone floral pattern, and so does
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`the floral design in Carolina Pad’s One Hip Chick collection. However, that is where the
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`similarities end. McFee’s Black and White Floral pattern depicts white flowers floating and
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`rotating on a black background. Carolina Pad’s One Hip Chick floral pattern, however, contains
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`navy flowers on a white background,2 depicts different types of flowers and branches than those
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`in McFee’s design, and has different spacing than in McFee’s design. Moreover, Carolina Pad’s
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`design depicts overlapping flowers, leaves, and branches and McFee’s design does not.
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`2 When examining the designs herein for extrinsic substantial similarity, it is imperative that one view the
`designs in their existing color palette.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 7 of 14
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`2. In the Navy Stripes
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`McFee’s In the Navy Stripes (Doc. No. 47-3) Carolina Pad’s One Hip Chick (Doc. No. 63-6, p.
`3)
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`Both designs contain horizontal stripes, however, stripes in and of themselves are not
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`original elements of a design that are subject to copyright protection. McFee’s design consists of
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`horizontal stripes in navy, pink, red, orange, and white, of varying thicknesses and arrangements.
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`In contrast, Carolina Pad’s stripe design contains various shades of blue stripes, along with white
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`and purple stripes, in different thicknesses and different patterns than those in McFee’s designs.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 8 of 14
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`3. Kaleidoscope Floral
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`McFee’s Kaleidoscope Floral (Doc. No. 47-4) Carolina Pad’s Day Trip (Doc. No. 63-7, p. 7)
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`Both designs obviously contain colorful flowers. McFee’s design contains numerous
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`daisy-type overlapping flowers with some flowers depicted as outlines only. The flowers are
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`crowded with very little space between them. Defendant’s design consists of a softer color
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`palette, contains no flower outlines, and depicts many different types of flowers, such as peonies,
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`black-eyed Susans, and hyacinths, as well as leaves and what appear to be eucalyptus branches.
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`The flowers are arranged and spaced differently, with minimal overlap. Defendant’s design also
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`features many more leaves and stems, with the flowers positioned on top of the greenery.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 9 of 14
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`4. Hot Chocolate Stripes
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`McFee’s Hot Chocolate Stripes (Doc. No.
`47-5)
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`Carolina Pad’s Day Trip (Doc. No. 63-7, p. 9)
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`While it is obvious that both designs contain stripes, the similarity ends there. McFee’s
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`design uses a black, orange, and purple pattern of horizontal stripes on a black background.
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`Some stripes appear to contain a cross-checked pattern. Carolina Pad’s stripe design does not
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`contain a similar color palette or a cross-checked pattern within a stripe. While some of the
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`stripes do contain patterns, the patterns are markedly different than the pattern in McFee’s
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`design. Moreover, some of the stripes in Defendant’s design are particularly thin, and there is
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`more overall size variation.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 10 of 14
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`5. Malibu Paisley
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`McFee’s Malibu Paisley Design (Doc.
`No. 47-7)
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`Carolina Pad’s One Hip Chick Collection
`(Doc. No. 63-6, p. 3)
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`Despite its name, McFee’s design does not contain paisleys, but rather bright swirls and
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`waves. The color palette is bright. In contrast, Carolina Pad’s design contains a classic paisley
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`design with multiple paisleys, dotted lines, and a dramatically different color palette.
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 11 of 14
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`6. Malibu Polka Dots
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`McFee’s Malibu Polka Dots Design (Doc.
`No. 47-6)
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`Carolina Pad’s Panache Collection (Doc. No. 63-
`8, p. 3)
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`There is superficial similarity here in that both designs contain polka dots. McFee’s
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`Malibu Polka Dots design is a random assortment of uniformly sized polka dots in many
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`different bright colors. Carolina Pad’s designs contain two layers of polka dots on an ivory
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`background: the first layer of polka dots are exceedingly small, in gold foil, and are arranged in a
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`deliberate, uniform pattern; and the second layer of Carolina Pad’s polka dots are larger,
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`arranged in various diagonals, and come in only three colors—pink, green, and dark purple.
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`D. Plaintiff’s Opposition
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`Plaintiff’s opposition fails to address the issue of substantial similarity in any meaningful
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`way. Her assertions that she believes Carolina Pad’s designs to be substantially similar to her
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`own designs is not evidence of similarity and is insufficient to create a genuine issue of material
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`fact. Plaintiff offers “no specific, objective similarity” between any of her designs and any of
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`Carolina Pad’s designs. See Humphreys & Partners Architects, L.P., 790 F.3d at 541-42
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`(affirming grant of summary judgment in favor of defendants in copyright claim because
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 12 of 14
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`plaintiff failed to identify any “specific, objective similarity between the two designs to support
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`his conclusion that the buildings' floorplans and appearances are similar.”)
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`Contrary to McFee’s claim, Carolina Pad is not required to present expert testimony to
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`show there is no “substantial similarity” between the designs. In fact, the Fourth Circuit has
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`found that a defendant need not present expert testimony to show a lack of similarity even if the
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`plaintiff presents expert testimony that the works are substantially similar. See Hennon, 64 F.3d
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`at 657. In fact, courts routinely determine noninfringement of a copyright as a matter of law at
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`the summary judgment stage based on their own review of the works at issue. See, e.g., Eaton
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`972 F. Supp. at 1023, 1027.
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`The Court finds that no reasonable trier of fact would find substantial similarity between
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`McFee’s designs and Defendant’s designs under the heightened standard that must be utilized for
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`thin works. Any purported similarities in the designs herein are merely dictated by the fact that
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`both have the same general subject matter: polka dots, stripes, and flowers. Any ordinary
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`observer could easily point out the differences between the designs. “[A] court can find designs
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`to be visually similar with the same general layout and nonetheless find the dissimilarities
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`significant enough to preclude a finding of infringement.” Building Graphics, 866 F. Supp. 2d at
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`544.
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`E. Copyright Registration
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`Even if the designs were substantially similar, it is undisputed that McFee did not yet
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`have copyright registrations for the In the Navy Stripes, Kaleidoscope Floral, Hot Chocolate
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`Stripes, Pattern Play Polka Dots, Malibu Paisley, and Malibu Polka Dots designs when she filed
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`her Complaint. The Supreme Court recently held that a plaintiff must have actual copyright
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`registrations before filing a claim, not merely copyright applications. See Fourth Estate Public
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 13 of 14
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`Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 886 (2019) (“We hold, in accord with the
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`United States Court of Appeals for the Eleventh Circuit, that registration occurs, and a copyright
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`claimant may commence an infringement suit, when the Copyright Office registers a
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`copyright.”). Defendant has cited numerous cases from other districts decided after Fourth Estate
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`that hold that a plaintiff who files suit with only a copyright application (not a registration)
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`cannot save her claim even if the application matures into a registration during the pendency of
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`the litigation. The Fourth Circuit has yet to weigh in on this particular issue. Having determined
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`that Plaintiff’s copyright infringement claims fail for lack of extrinsic substantial similarity, this
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`Court declines to address this argument.
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`IT IS THEREFORE ORDERED that Defendant’s Motion for Summary Judgment (Doc.
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`No. 64) is hereby GRANTED, and Plaintiff’s Motion for Partial Summary Judgment Dismissing
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`Eight Affirmative Defenses and Establishing the Infringer’s Profits (Doc. No. 66) is hereby
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`DENIED.
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`Signed: November 16, 2023
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`Case 3:21-cv-00633-GCM Document 82 Filed 11/16/23 Page 14 of 14
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