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.
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'oeil
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. 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
Peel appeals the dismissal of its copyright infringement case on summary judgment. Rug Market cross-appeals the denial of costs and attorneys' fees.
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.
The standard for summary judgment mirrors that for judgment as a matter of law.
B. Copyright Infringement
To prevail on a copyright infringement claim, a plaintiff must show (1) ownership of a valid copyright and (2) unauthorized copying.
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
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:
In this case, the district court found that the Directoire design could be copyrighted, and that Peel possesses a valid copyright.
1. Factual Copying
As this court stated in Ferguson v. National Broadcasting Co., a copyright infringement plaintiff must establish "a reasonable possibility of access" by the defendant.
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."
Peel emphasizes that Rug Market "supplied designs and samples 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.
The broad dissemination of the Directoire to the rug trade distinguishes this case from our two leading copyright access cases, Ferguson
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."
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.,
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.
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 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
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."
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.
3. Independent Creation
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.
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
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.