13-1672-cv
Klauber Brothers, Inc. v. The Bon-Ton Stores, Inc.
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
SUMMARY ORDER
RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO
A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS
GOVERNED BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S
LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH
THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN
ELECTRONIC DATABASE (WITH THE NOTATION “SUMMARY ORDER”). A PARTY CITING
A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY
COUNSEL.
At a stated term of the United States Court of Appeals for the Second Circuit, held at the
Thurgood Marshall Courthouse, 40 Foley Square, in the City of New York, on the 21st day of
February, two thousand fourteen.
Present:
ROBERT A. KATZMANN,
Chief Judge,
RALPH K. WINTER,
GUIDO CALABRESI,
Circuit Judges.
________________________________________________
KLAUBER BROTHERS, INC.,
Plaintiff-Appellant,
v. No. 13-1672-cv
THE BON-TON STORES, INC.,
Defendant-Appellee,
RUSSELL-NEWMAN, INC.,
Defendant.
________________________________________________
For Plaintiff-Appellant: PHILIP H. GOTTFRIED (Ira E. Silfin, on the brief), Amster,
Rothstein & Ebenstein LLP, New York, N.Y.
For Defendant-Appellee: SUZAN JO (Vanessa C. Hew and Robert T. Parker, on the
brief), Duane Morris LLP, New York, N.Y.
Appeal from the United States District Court for the Southern District of New York
(Gardephe, J.).
ON CONSIDERATION WHEREOF, it is hereby ORDERED, ADJUDGED, and
DECREED that the judgment of the district court is AFFIRMED.
Plaintiff-Appellant Klauber Brothers, Inc. (“Klauber”) appeals from a March 26, 2013
order of the United States District Court for the Southern District of New York (Gardephe, J.),
dismissing Klauber’s claims of breach of contract, copyright infringement, and false advertising
against Defendant-Appellee The Bon-Ton Stores, Inc. (“Bon-Ton”). Klauber, the co-author of
two lace designs known by the numbers 7087 and 7088, alleges that Bon-Ton advertised and
sold a line of women’s underwear with a lace waistband whose design infringes on Klauber’s
copyrights. On appeal, Klauber argues that the district court erred in dismissing Klauber’s
copyright infringement claim on the ground that Bon-Ton’s design is not substantially similar to
Klauber’s copyrighted designs as a matter of law. We presume the parties’ familiarity with the
facts and procedural history of this case.
Preliminarily, we find that we have appellate jurisdiction over this case under our
decision in Leonhard v. United States, 633 F.2d 599, 608 (2d Cir. 1980). Pursuant to Federal
Rule of Civil Procedure 54(b), “when there are two or more defendants who have been served
and the district court dismisses the action as to fewer than all of them, a final judgment may not
be entered reflecting that dismissal unless the court so instructs and makes an ‘express
determination’ that there is no just reason to delay entry of the judgment.” Leonhard, 633 F.2d at
608. “When, however, the action is dismissed as to all defendants who have been served and
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only unserved defendants ‘remain,’” the district court’s failure to resolve claims asserted against
an unserved defendant does not deprive this Court of jurisdiction over an appeal, “since there is
no basis for believing there will be any further adjudication in the action, or, therefore, for
holding the dismissals subject to revision.” Id. Here, while the order appealed from only
addressed Klauber’s claims against Bon-Ton, and left unresolved its claims against Defendant
Russell-Newman, Inc. (“Russell”), Russell was never served with process, never waived service
of process, never appeared in the proceedings below, and, according to Klauber, is defunct.
Under Leonhard, because Russell is an unserved defendant, the district court’s failure to dismiss
Klauber’s claims against Russell does not impede our jurisdiction.
We find no merit in Bon-Ton’s contention that this case falls within an exception to the
Leonhard rule because there is some possibility of further adjudication in this case. Bon-Ton
points out that an attorney briefly appeared on Russell’s behalf in this appeal, and contends that,
even though that appearance was withdrawn without explanation less than a month later, it
nevertheless raises doubts about whether Russell is in fact defunct, and therefore raises the
possibility of further litigation of Klauber’s claims against Russell in the district court. But in
any event, Russell remains unserved, and Klauber has represented unequivocally that it has no
intention of further pursuing its claims against Russell. Accordingly, even assuming arguendo
that there is an exception to the Leonhard rule for cases in which further adjudication in the
district court is contemplated, see Brown v. N.Y. State Supreme Court for Second Judicial Dist.,
372 F. App’x 183, 185 (2d Cir. 2010); contra Fed. Sav. & Loan Ins. Corp. v. Tullos-Pierremont,
894 F.2d 1469, 1473–74 (5th Cir. 1990), no such exception would apply in this case.
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Turning to the merits of Klauber’s appeal, we review a district court’s grant of a motion
to dismiss for failure to state a claim de novo, “accepting all factual allegations in the complaint
as true, and drawing all reasonable inferences in the plaintiff’s favor.” Peter F. Gaito
Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 61 (2d Cir. 2010) (internal quotation
marks omitted). “To survive a motion to dismiss, a complaint must contain sufficient factual
matter, accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal,
556 U.S. 662, 678 (2009) (internal quotation marks omitted).
To prevail on a claim of copyright infringement, a plaintiff must establish that “(1) the
defendant actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial
similarity exists between the defendant’s work and the protectible elements of plaintiff’s.” Peter
F. Gaito Architecture, 602 F.3d at 63 (internal quotation marks omitted). “The standard test for
substantial similarity between two items is whether an ordinary observer, unless he set out to
detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal as the
same.” Id. at 66 (internal quotation marks and brackets omitted). While substantial similarity is
often a question of fact reserved for the trier of fact, “it is entirely appropriate for a district court
to resolve that question as a matter of law” if “no reasonable jury, properly instructed, could find
that the two works are substantially similar.” Id. at 63 (internal quotation marks omitted).
Moreover, where, as here, the works in question are attached to the plaintiff’s complaint, the
district court may “consider the similarity between those works in connection with a motion to
dismiss, because the court has before it all that is necessary in order to make such an evaluation.”
Id. at 64.
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On our independent review of Klauber’s copyrighted designs and Bon-Ton’s allegedly
infringing design, we reach the same conclusion as the district court: The designs do not convey
a substantially similar aesthetic appeal. To be sure, the copyrighted designs and the accused
design employ similar elements—curling sprigs, leaves, and flowers—placed in a similar spatial
arrangement. But all of these elements in Bon-Ton’s design contain features that differentiate
them from the elements in Klauber’s designs. For example, the sprigs in Klauber’s designs are
long, winding, and delicate, while the sprigs in Bon-Ton’s design are shorter and more compact;
the leaves in Klauber’s designs all have a distinctive indentations and vary in shape and size,
while the leaves in Bon-Ton’s design have no indentations and are uniform in shape and size;
and the flowers in Klauber’s designs are buds growing upward away from the nearest border,
while the flowers in Bon-Ton’s design are blossoms growing downward towards the border.
Moreover, the accumulation of these differences gives Bon-Ton’s design a substantially
different “total concept and overall feel” than Klauber’s designs. Id. at 66 (internal quotation
marks omitted). While Klauber’s designs appear delicate and ornate, with the dominant element
being the semicircles formed by the curling sprigs, Bon-Ton’s design conveys a more
rudimentary and abstract feel, with the dominant element being the straight portions of the
sprigs. On the whole, we conclude that no reasonable juror, properly instructed, would “regard
the [works’] aesthetic appeal as the same.” Id. (internal quotation marks omitted).
We have considered all of the plaintiff’s remaining arguments and find them to be
without merit. Accordingly, for the foregoing reasons, the judgment of the district court is
AFFIRMED.
FOR THE COURT:
CATHERINE O’HAGAN WOLFE, CLERK
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