IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
_______________________________
No. 99-31051
_______________________________
PEEL & COMPANY, INC.,
Plaintiff-Appellant-Cross-Appellee,
versus
THE RUG MARKET,
Defendant-Appellee-Cross-Appellant.
_________________________________________________
Appeals from the United States District Court
for the Eastern District of Louisiana
_________________________________________________
January 24, 2001
Before HIGGINBOTHAM, WIENER, and DENNIS, Circuit Judges.
WIENER, Circuit Judge:
Plaintiff-Appellant Peel & Company, Inc. (“Peel”) appeals the
summary judgment dismissal of its claim of copyright infringement.
We reverse and remand for further proceedings by the district
court.
I.
FACTS AND PROCEEDINGS
In 1991, Peel designed a rug and named it “Directoire” for the
early Eighteenth Century French historical period that inspired the
rug’s pattern. The design, later copyrighted, features two rows of
panels, each of which is decorated with a central floral design and
trompe l’oeil1 triangular shading intended to suggest a coffered
ceiling. The Directoire also features laurel garlands, punctuated
by rosettes, surrounding each panel, and an outer border of
repeated squares. Although other Directoire-style rugs exist, Peel
claims that it alone incorporates the trompe l’oeil triangular
shading and square-patterned border into its design.
Peel, a rug wholesaler, arranged for the manufacture of the
Directoire, which is handwoven wool and retails for over $1,000.
Some 4,000 copies of the rug have been sold throughout the United
States since 1993. It is displayed in at least 100 showrooms,
including four in the Los Angeles area, and it has appeared in
numerous trade shows as well as in Peel’s catalog.
Defendant-Appellee The Rug Market (“Rug Market”), based in Los
Angeles, imports rugs and sells them wholesale to retailers. One
of its primary suppliers is Ambadi Enterprises (“Ambadi”), of New
Delhi, India, which designs, manufactures, and sells home
furnishings, including rugs. Ambadi has been supplying rugs to Rug
Market since at least 1986, and is the source of thirty to forty
percent of its merchandise.
In 1998, Rug Market began selling the “Tessoro” rug, made by
Ambadi. The Tessoro is machine-woven of jute and retails for $99.
1
This French phrase has been defined to mean “deception of
the eye esp[ecially] by a painting: as . . . the use in mural and
ceiling decoration of painted detail suggestive of architectural or
other three-dimensional elements but often characterized by
exaggerated perspective, abrupt contrast of light and shade, or
general stylization which stresses artificiality.” Webster’s Third
New International Dictionary (unabridged) 2451 (1986).
2
In photographs, it strongly resembles the Directoire, featuring the
same general scale and proportionate size among the elements. Key
differences between the Tessoro and the Directoire include the
Tessoro’s elimination of the garlands and rosettes between panels;
its use of one instead of two types of flower medallions; its use
of four instead of nine colors; and, in general, its coarser make
and lower quality. Peel maintains that the Tessoro is a copy of
the Directoire and that these differences only make the infringing
rug faster and cheaper to manufacture.
Peel issued a written demand that Rug Market cease selling the
Tessoro rug, then sued for deliberate copyright infringement. The
district court granted Rug Market’s pretrial motion for summary
judgment. The court found that Peel had failed to submit evidence
sufficient to establish that it would be able to carry its burden
of proving Ambadi’s access to the Directoire design at trial. The
court also found that the rugs were not similar enough to imply
access, finding that, under the “ordinary observer” test, “no
reasonable person would mistake these two rugs as being the same.”
The district court concluded that Peel’s circumstantial evidence of
copying was inadequate to support a copyright claim. The court
also denied without comment Rug Market’s motion for costs and
attorneys’ fees.
Peel appeals the dismissal of its copyright infringement case
on summary judgment. Rug Market cross-appeals the denial of costs
and attorneys’ fees.
3
II.
ANALYSIS
A. Standard of Review
This case is on appeal from a dismissal on summary judgment.
We therefore review the record de novo, applying the same standard
as the district court.2 A motion for summary judgment is properly
granted only if there is no genuine issue as to any material fact.3
A fact issue is material if its resolution could affect the outcome
of the action.4 In deciding whether a fact issue has been created,
the court must view the facts and the inferences to be drawn from
them in the light most favorable to the nonmoving party.5
The standard for summary judgment mirrors that for judgment as
a matter of law.6 Thus, the court must review all of the evidence
in the record, but make no credibility determinations or weigh any
evidence.7 In reviewing all the evidence, the court must disregard
all evidence favorable to the moving party that the jury is not
required to believe, and should give credence to the evidence
2
Morris v. Covan World Wide Moving, Inc., 144 F.3d 377, 380
(5th Cir. 1998).
3
Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986).
4
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
5
Olabisiomotosho v. City of Houston, 185 F.3d 521, 525 (5th
Cir. 1999).
6
Celotex, 477 U.S. at 323.
7
Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133,
120 S. Ct. 2097, 2102 (2000).
4
favoring the nonmoving party as well as to the evidence supporting
the moving party that is uncontradicted and unimpeached.8
B. Copyright Infringement
To prevail on a copyright infringement claim, a plaintiff must
show (1) ownership of a valid copyright and (2) unauthorized
copying.9 Peel’s copyright is no longer in dispute,10 leaving
copying as the central issue of this appeal. As direct evidence of
copying is rarely available, factual copying may be inferred from
(1) proof that the defendant had access to the copyrighted work
prior to creation of the infringing work and (2) probative
similarity.11
To determine access, the court considers whether the person
who created the allegedly infringing work had a reasonable
opportunity to view the copyrighted work. A bare possibility will
not suffice; neither will a finding of access based on speculation
8
Id. at 2110.
9
Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d 772,
790 (5th Cir. 1999); Norma Ribbon & Trimming, Inc. v. Little, 51
F.3d 45, 47 (5th Cir. 1995).
10
Rug Market asserted on appeal that Peel’s rug design is
“uncopyrightable,” but did not brief the issue beyond stating that
it “adopts and incorporates by reference” its arguments below.
Therefore, Rug Market has waived the issue. See Cinel v. Connick,
15 F.3d 1338, 1345 (5th Cir. 1994); Yohey v. Collins, 985 F.2d 222,
224-25 (5th Cir. 1993).
11
See Engineering Dynamics, Inc. v. Structural Software,
Inc., 26 F.3d 1335, 1340 (5th Cir. 1994), opinion supplemented and
reh’g denied, 46 F.3d 408 (5th Cir. 1995); Ferguson v. Nat’l Broad.
Co., 584 F.2d 111, 113 (5th Cir. 1978).
5
or conjecture.12 In this court, “[i]f the two works are so
strikingly similar as to preclude the possibility of independent
creation, ‘copying’ may be proved without a showing of access.”13
Not all copying is legally actionable, however. To prevail on
a copyright infringement claim, a plaintiff also must show
substantial similarity between the two works:14 “To determine
whether an instance of copying is legally actionable, a side-by-
side comparison must be made between the original and the copy to
determine whether a layman would view the two works as
‘substantially similar.’”15 Although this question typically should
be left to the factfinder,16 summary judgment may be appropriate if
the court can conclude, after viewing the evidence and drawing
inferences in a manner most favorable to the nonmoving party, that
no reasonable juror could find substantial similarity of ideas and
expression.17 If, after the plaintiff has established its prima
12
Ferguson, 584 F.2d at 113.
13
Id. (emphasis added).
14
Alcatel, 166 F.3d at 790.
15
Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th
Cir. 1997); see also King v. Ames, 179 F.3d 370, 376 (5th Cir.
1999).
16
Creations Unlimited, 112 F.3d at 816.
17
Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989); see also
Herzog v. Castle Rock Entertainment, 193 F.3d 1241, 1247 (11th Cir.
1999) (“Summary judgment historically has been withheld in
copyright cases because courts have been reluctant to make
subjective determinations regarding the similarity between two
works. However, non-infringement may be determined as a matter of
law on a motion for summary judgment, either because the similarity
6
facie case, the defendant offers evidence of independent creation,
the plaintiff has the burden of proving that the defendant in fact
copied the protected material.18
In this case, the district court found that the Directoire
design could be copyrighted, and that Peel possesses a valid
copyright.19 Therefore, the issues on appeal are whether Peel has
failed to establish the existence of a genuine issue of material
fact as to whether Rug Market copied its Directoire design, and
whether any such copying was legally actionable, that is, whether
the rugs are substantially similar.
1. Factual Copying
a. Access
As this court stated in Ferguson v. National Broadcasting Co.,
a copyright infringement plaintiff must establish “a reasonable
possibility of access” by the defendant.20 Peel adduced
circumstantial evidence of the broad sale and display —— in
showrooms, trade shows and catalogs —— of the Directoire rug in the
United States, including Los Angeles. We find this evidence
adequate under Ferguson to raise a genuine issue of material fact
between two works concerns only non-copyrightable elements of the
plaintiff’s work, or because no reasonable jury, properly
instructed, could find that the two works are substantially
similar.”) (citations omitted).
18
Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1375
(5th Cir. 1981).
19
See supra note 10.
20
584 F.2d 111, 113 (5th Cir. 1978).
7
as to whether Rug Market had access to the design. In particular,
Rug Market employees and the company’s principal, Michael Shabtai,
attended rug trade shows where the Directoire was exhibited, and
Shabtai admitted that he may have visited Peel’s showroom, where
the Directoire was displayed.
Whether designers for Ambadi, located in New Delhi, India, had
a reasonable possibility of access presents a more difficult
question. The district court found that Peel produced no evidence
of Ambadi’s direct access to the Directoire, concluding that
“[i]nstead, Peel argues that Rug Market had access and confers this
knowledge to Ambadi.”
The parties sharply contest whether Ambadi had access to the
Directoire design. Peel argues access by Ambadi under two
alternative theories: wide dissemination21 and chain of events.22
Even though we have not expressly adopted either theory, we are
satisfied that the facts of this case can be adequately addressed
under Ferguson’s “reasonable possibility of access” test. The
question here is whether Peel has produced more than speculation
and conjecture regarding access by Ambadi.
Peel emphasizes that Rug Market “supplied designs and samples
21
See, e.g., Cholvin v. B. & F. Music Co., 253 F.2d 102 (7th
Cir. 1958); Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946);
Primcot Fabrics v. Kleinfab Corp., 368 F. Supp. 482 (S.D.N.Y.
1974).
22
See, e.g., Moore v. Columbia Pictures Indus., Inc., 972
F.2d 939 (8th Cir. 1992); Kamar Int’l, Inc. v. Russ Berrie & Co.,
657 F.2d 1059 (9th Cir. 1981); De Acosta v. Brown, 146 F.2d 408 (2d
Cir. 1944).
8
on a regular basis for Ambadi to use in manufacturing carpets for
Rug Market,” and that Shabtai admitted that the Tessoro design
probably was created in response to his request for “a masculine,
geometric type rug.” In addition, Ambadi’s manager, Ishwinder
Singh, visits the United States —— including Los Angeles —— at
least once a year. Peel argues that Singh and his design
representatives review magazines and travel around this country to
observe designs and obtain ideas, in addition to visiting
exhibitions and fairs and researching in design institute
libraries. These contacts, Peel argues, establish at least the
existence of a genuine issue of material fact regarding access,
thereby making the grant of summary judgment inappropriate.
Rug Market counters that Peel has not established that Ambadi
had access to the Directoire design. In particular, Rug Market
states that it “did not provide any pictures, rugs, information or
input to Ambadi in connection with the design and manufacture of
the Tessoro Jute. Rug Market simply purchased the Tessoro Jute
from Ambadi.” Furthermore, “Ambadi’s designers are not familiar
with the work entitled Directoire and did not see it, review it or
copy it when making the Tessoro Jute rug. . . . [T]he Tessoro Jute
rug is in line with the tile rugs being continuously created by
Ambadi for over a decade and is an original creation.” Shabtai
also states that he never acquired or possessed a Directoire rug or
a picture of it, but concedes that he could have seen the rug at
trade shows.
9
The broad dissemination of the Directoire to the rug trade
distinguishes this case from our two leading copyright access
cases, Ferguson23 and McGaughey v. Twentieth Century Fox Film Corp.24
Each of those cases involved a copyrighted work distributed to only
a few individuals, then allegedly infringed by third parties. In
Ferguson, a composer gave a copy of her musical composition to each
of six individuals or companies, all of which copies were returned
to her.25 The musician she accused of infringement had only
unrelated contacts with one of the companies, and stated that he
never had heard of the plaintiff or her composition before she
filed suit.26 No access was found.
In McGaughey, the author of an unpublished novel mailed a copy
of that manuscript to Fox Television some two months after another
writer registered his completed script for the movie “Dreamscape.”27
The TV studio declined interest in the novel and returned it to the
author. The “Dreamscape” film script later was rewritten, and Fox
Film Corporation ultimately served as the distributor of the
finished film. “All of the people involved in the writing of the
original script and the rewrite averred that they had no knowledge
of the appellant or his novel until this lawsuit,” the McGaughey
23
Ferguson v. Nat’l Broad. Co., 584 F.2d 111 (5th Cir. 1978).
24
12 F.3d 62 (5th Cir. 1994).
25
Ferguson, 584 F.2d at 112.
26
Id. at 113.
27
McGaughey, 12 F.3d at 64.
10
court wrote.28 The court declined to find access to the plaintiff’s
novel, noting that to do otherwise it would have to assume not only
that the Dreamscape creators lied, but that Fox made copies of the
novel before returning it to the author and distributed those
copies.29
This case appears to have more in common with a recent opinion
from the Southern District of New York, Odegard, Inc. v. Costikyan
Classic Carpets, Inc.,30 than with either Ferguson or McGaughey.
Odegard involved allegations that a carpet designer infringed a
competitor’s copyrights in three carpets. In that case, the
district court found adequate evidence of access to the various
carpets based on their wide dissemination and opportunities the
defendants had to view them.31 Those opportunities included a visit
by one of the defendants to a designer showroom next door to
another showroom where one of the plaintiff’s carpets was
displayed; the defendants’ attendance at a carpet show where two of
the plaintiff’s carpets were shown; and a defendant’s examination
of the type of magazine in which two of the plaintiff’s carpets
were advertised.32 Although the access evidence in Odegard may be
more specific than that proffered by Peel, it appears to be of the
28
Id. at 65.
29
Id.
30
963 F. Supp. 1328 (S.D.N.Y. 1997).
31
Id. at 1336-37.
32
Id.
11
same type.
We conclude that Peel has raised a genuine issue of material
fact as to whether the Directoire was widely disseminated among
those involved in the United States rug trade, thus providing both
Rug Market and Ambadi access to the Directoire. A jury should
decide whether Peel has shown “a reasonable possibility of access”
by the defendant.33
b. Probative Similarity
The second step in deciding whether Peel has raised a genuine
issue of material fact regarding factual copying of the Directoire
requires determining whether the rugs, when compared as a whole,
are adequately similar to establish appropriation. The district
court concluded that the Tessoro was not substantially similar to
the Directoire. The court acknowledged that “these two rugs at
first glance do have a certain similarity to each other,” but held
that “no reasonable person would mistake these two rugs as being
the same. The two rugs quite obviously do not have the same
aesthetic appeal.” The court focused on the differences between
the two, including the number of colors used, appearance of depth
or flatness, and the additional detail found in the Directoire.
Rug Market argues that the two rugs do not have the same
aesthetic appeal because its Tessoro does not evoke the Directoire
period of French history. Peel asserts that the differences
between the two rugs are relatively small and are consistent with
33
Ferguson, 584 F.2d at 113.
12
shortcuts taken to make a cheap copy. The two sides submitted
conflicting expert affidavits assessing the similarity of the rugs.
We believe that reasonable minds —— particularly minds of
reasonable laymen —— could differ as to whether these two rugs are
probatively similar. Even though the Tessoro design omits some of
the more complex elements employed in the design of the Directoire,
an average lay observer could find the appearance of the two rugs
similar enough to support a conclusion of copying. The rugs have
the same overall proportion, and generally employ the same color
schemes. They use the same number of repeating panels, each of
which features shaded triangles and a central floral medallion.
Their repeating square-patterned borders also are similar. We
cannot agree with the district court that the two rugs are so
dissimilar that, as a matter of law, no reasonable jury could find
copying here.
2. Substantial Similarity
As noted above, though, not all copying is legally actionable.
To support a claim of copyright infringement, the copy must bear a
substantial similarity to the protected aspects of the original.
The Supreme Court has defined this essential element of an
infringement claim as “copying of constituent elements of the work
that are original.”34 Under the ordinary observer or audience test
used in making this factual determination, a layman must detect
34
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
361 (1991) (emphasis added).
13
piracy “without any aid or suggestion or critical analysis by
others. The reaction of the public to the matter should be
spontaneous and immediate.”35
Peel argues that the district court erred in failing to
identify the original constituent elements of its Directoire
design: trompe l’oeil panels with central floral medallions and
triangular shading, along with a border of small squares. On de
novo review, we agree with Peel. It has raised genuine issues of
material fact as to whether the claimed original constituent
elements of the Directoire are unique and therefore protectible by
copyright, and whether their use in the two rugs is substantially
similar.36 A jury ultimately may conclude that the similarities
between the Tessoro and protected constituent elements of the
Directoire are insubstantial, but we are convinced that they are
sufficiently substantial to preclude summary judgment.37
3. Independent Creation
35
Harold Lloyd Corp. v. Witwer, 65 F.2d 1, 18 (9th Cir.
1933); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 13.03[E][1][a], at 13-79 (2000).
36
We note that a design is not to be confused with the
“tangible medium of expression” in which it is embodied. See 17
U.S.C. §§ 102, 106. Peel therefore is correct when it insists that
quality differences between a handmade wool rug and a stenciled
jute should not be considered when comparing the similarities or
“aesthetic appeal” of the rugs’ designs, distinct from the
aesthetic appeal of the material and workmanship.
37
See Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1216 (11th
Cir. 2000) (finding similarities significant enough to preclude
summary judgment and noting that “‘[s]ubstantial similarity’” is a
question of fact, and summary judgment is only appropriate if no
reasonable jury could differ in weighing the evidence”).
14
Even if Peel establishes a prima facie case of copying, Rug
Market still may rebut that case with evidence of independent
creation. Rug Market did present some evidence of independent
creation, but the district court concluded only that, “in light of
the Tessoro’s simplicity in design, use of bold geometric shapes,
squares, triangles, and circular flowers, it is conceivable that
Ambadi designed the Tessoro on its own accord.” We do not view the
evidence Rug Market presented as adequate to support a holding as
a matter of law that the Tessoro was independently created; rather,
a genuine question of material fact remains on this issue, which we
also leave for the factfinder.38
C. Attorneys’ Fees
Rug Market’s appeal of the district court’s refusal to award
attorneys’ fees and costs is mooted by our remand of this case for
trial on the merits.
D. Motion to Strike Evidence
Rug Market did not brief this issue, noting only that it
“adopts and incorporates by reference its argument below.”
Therefore, it has abandoned the issue on appeal.39
III.
CONCLUSION
38
The district court did not explicitly address the striking
similarity test, although it did discuss the inference of access in
terms of substantial similarity. We express no opinion as to
whether we might find the Tessoro strikingly similar to the
Directoire.
39
See Cinel v. Connick, 15 F.3d 1338, 1345 (5th Cir. 1994);
Yohey v. Collins, 985 F.2d 222, 224-25 (5th Cir. 1993).
15
Peel has raised genuine issues of material fact regarding
access to the Directoire by Rug Market and the degree of similarity
between the two rugs at issue. We therefore reverse the district
court’s summary judgment and remand for further proceedings
consistent with this opinion.
REVERSED and REMANDED.
16