MEMORANDUM
TAURO, District Judge.
Background
Introduction
Plaintiff American Century Home Fabrics, Inc., manufactures and sells fabric to retailers and furniture makers. Plaintiff owns a number of copyrighted designs. One design that Plaintiff sells is its Union design. Plaintiff alleges that in 2004, Defendant Ashley Furniture Industries, Inc. (“Ashley”) purchased a sample of the Union pattern from Plaintiff and then shopped it to Zheijang Yulong Industry Co., Ltd. (“Yulong”) for duplication and reproduction. Plaintiff charges that Ashley then began selling fabric with a design substantially similar to the Union design. Plaintiff further charges that its former employee, Lawrence Ward (“Ward”), left Plaintiff in September, 2003, and formed Defendant Southern Sales, Inc. (“Southern”). According to Plaintiff, Southern has sold products containing a fabric substantially similar to the Union fabric. Plaintiff brings this action against Ashley and Southern for willful copyright infringement. Before the court is Plaintiffs
Motion for a Preliminary Injunction
to enjoin Ashley and Southern from infringing its Union design.
The Disputed Facts
According to affidavits submitted by the Plaintiff, it owns a valid copyright that has been infringed. Plaintiff bought the design then called “LOUISE 019C” from a company known as Art Cottage in the United Kingdom in 2002.
Plaintiff avers
that on November 4, 2005, it registered a copyright in this design, under the name of “Louise 019C.”
Plaintiff states that it began selling this fabric under the name “Union” in 2003 and has sold in excess of 1.4 million yards of this fabric.
Plaintiff avers that Defendant Ashley purchased a sample fifty yard roll of the fabric from Plaintiff in August 2004 and subsequently began marketing furniture with fabric identical to the Union design.
Plaintiff avers that Ward worked for the Plaintiff, had access to the Union fabric, and has since founded Defendant Southern which sells identical fabric.
Defendant Ashley responds with its own affidavits which contest Plaintiffs claim of ownership in the pattern. First, Yulong’s CEO, Gao Langgen (“Gao”), has filed an affidavit asserting that in May 2004, Yu-long independently created the allegedly infringing fabric, known as SHDT6357.
Yulong submits exhibits demonstrating the progression of its design of the SHDT6357 fabric from similar designs developed in 2002 and 2003.
Second, Ashley’s Vice President of Design and Merchandising, Lisa Adair (“Adair”), states that Ashley only purchased the sample roll to compare it with a similar, pre-existing pattern made by Yu-long.
Adair avers that purchasing a full sample roll is standard practice in the industry.
She contends that Ashley opted to use Yulong’s pattern in its furniture because SHDT6357 was cheaper and of comparable quality.
For its part, Defendant Southern contends that Plaintiffs Union fabric design is derived from a copy of Yulong’s fabric design during a trip Ward and Plaintiffs President Jason Jiang (“Jiang”) made to China in late 2002 or early 2003.
Plaintiff denies that Ward and Jiang ever made such a trip.
In response, Ward admits that in his first affidavit, he may have been “mixing up” trips and may have overstated his responsibilities.
Nonetheless, Ward
re-avers that the substance of his earlier Declaration “is believed to be accurate.”
In this way, Ward and Jiang’s affidavits put forth contradictory statements; either Ward or Jiang is spinning a yarn.
In response to Ashley’s allegations, Plaintiff argues that Yulong likely copied its Union pattern. Plaintiff asserts that it hired Yulong’s sister company, Yulong Coating Industry Company, Ltd. (‘Yulong Coating”), to provide backing for its Union fabric in March 2003, and that this arrangement allowed Yulong easy access to the design.
The General Manager of Yulong Coating confirms that Plaintiff sends its Union fabric to Yulong Coating for processing.
Mr. Jiang further affirms that Yulong is not known in the industry as a fabric design house, and that it is a mere manufacturer for American importers.
Plaintiffs President, Jiang, even swears that Gao, the President of Yulong, told Jiang that he signed Defendant Ashley’s false affidavit just to avoid losing business.
Jiang says that Gao told him that he duplicated a sample fabric Ashley brought him.
Gao denies any such conversation or admission took place.
It is again clear that at least one of the affidavits is fabricated.
Jiang further asserts that he confronted Adair, a Vice President at Ashley, about the copying, that she admitted copying the pattern, and said that Ashley had made enough changes to differentiate Ashley’s design from Union.
Adair denies ever making such an admission, and contends that her contact with Jiang was limited to a sales pitch.
Furthermore, she states that she never gave the Union fabric to Yulong, but rather obtained SHDT6357 independently from Yulong. Adair avers that she then compared the two fabrics and decided to use Yulong’s less expensive fabric.
These competing affidavits illustrate yet another factual discrepancy.
Discussion
The Legal Standard
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MEMORANDUM
TAURO, District Judge.
Background
Introduction
Plaintiff American Century Home Fabrics, Inc., manufactures and sells fabric to retailers and furniture makers. Plaintiff owns a number of copyrighted designs. One design that Plaintiff sells is its Union design. Plaintiff alleges that in 2004, Defendant Ashley Furniture Industries, Inc. (“Ashley”) purchased a sample of the Union pattern from Plaintiff and then shopped it to Zheijang Yulong Industry Co., Ltd. (“Yulong”) for duplication and reproduction. Plaintiff charges that Ashley then began selling fabric with a design substantially similar to the Union design. Plaintiff further charges that its former employee, Lawrence Ward (“Ward”), left Plaintiff in September, 2003, and formed Defendant Southern Sales, Inc. (“Southern”). According to Plaintiff, Southern has sold products containing a fabric substantially similar to the Union fabric. Plaintiff brings this action against Ashley and Southern for willful copyright infringement. Before the court is Plaintiffs
Motion for a Preliminary Injunction
to enjoin Ashley and Southern from infringing its Union design.
The Disputed Facts
According to affidavits submitted by the Plaintiff, it owns a valid copyright that has been infringed. Plaintiff bought the design then called “LOUISE 019C” from a company known as Art Cottage in the United Kingdom in 2002.
Plaintiff avers
that on November 4, 2005, it registered a copyright in this design, under the name of “Louise 019C.”
Plaintiff states that it began selling this fabric under the name “Union” in 2003 and has sold in excess of 1.4 million yards of this fabric.
Plaintiff avers that Defendant Ashley purchased a sample fifty yard roll of the fabric from Plaintiff in August 2004 and subsequently began marketing furniture with fabric identical to the Union design.
Plaintiff avers that Ward worked for the Plaintiff, had access to the Union fabric, and has since founded Defendant Southern which sells identical fabric.
Defendant Ashley responds with its own affidavits which contest Plaintiffs claim of ownership in the pattern. First, Yulong’s CEO, Gao Langgen (“Gao”), has filed an affidavit asserting that in May 2004, Yu-long independently created the allegedly infringing fabric, known as SHDT6357.
Yulong submits exhibits demonstrating the progression of its design of the SHDT6357 fabric from similar designs developed in 2002 and 2003.
Second, Ashley’s Vice President of Design and Merchandising, Lisa Adair (“Adair”), states that Ashley only purchased the sample roll to compare it with a similar, pre-existing pattern made by Yu-long.
Adair avers that purchasing a full sample roll is standard practice in the industry.
She contends that Ashley opted to use Yulong’s pattern in its furniture because SHDT6357 was cheaper and of comparable quality.
For its part, Defendant Southern contends that Plaintiffs Union fabric design is derived from a copy of Yulong’s fabric design during a trip Ward and Plaintiffs President Jason Jiang (“Jiang”) made to China in late 2002 or early 2003.
Plaintiff denies that Ward and Jiang ever made such a trip.
In response, Ward admits that in his first affidavit, he may have been “mixing up” trips and may have overstated his responsibilities.
Nonetheless, Ward
re-avers that the substance of his earlier Declaration “is believed to be accurate.”
In this way, Ward and Jiang’s affidavits put forth contradictory statements; either Ward or Jiang is spinning a yarn.
In response to Ashley’s allegations, Plaintiff argues that Yulong likely copied its Union pattern. Plaintiff asserts that it hired Yulong’s sister company, Yulong Coating Industry Company, Ltd. (‘Yulong Coating”), to provide backing for its Union fabric in March 2003, and that this arrangement allowed Yulong easy access to the design.
The General Manager of Yulong Coating confirms that Plaintiff sends its Union fabric to Yulong Coating for processing.
Mr. Jiang further affirms that Yulong is not known in the industry as a fabric design house, and that it is a mere manufacturer for American importers.
Plaintiffs President, Jiang, even swears that Gao, the President of Yulong, told Jiang that he signed Defendant Ashley’s false affidavit just to avoid losing business.
Jiang says that Gao told him that he duplicated a sample fabric Ashley brought him.
Gao denies any such conversation or admission took place.
It is again clear that at least one of the affidavits is fabricated.
Jiang further asserts that he confronted Adair, a Vice President at Ashley, about the copying, that she admitted copying the pattern, and said that Ashley had made enough changes to differentiate Ashley’s design from Union.
Adair denies ever making such an admission, and contends that her contact with Jiang was limited to a sales pitch.
Furthermore, she states that she never gave the Union fabric to Yulong, but rather obtained SHDT6357 independently from Yulong. Adair avers that she then compared the two fabrics and decided to use Yulong’s less expensive fabric.
These competing affidavits illustrate yet another factual discrepancy.
Discussion
The Legal Standard
To obtain a preliminary injunction, the moving party must show: (1) a likelihood of success on the merits; (2) irreparable harm if an injunction does not issue; (3) that the threat of injury to the movant outweighs the harm the injunction may inflict on the nonmovant; and (4) that granting the preliminary injunction will not violate the public interest.
In a copyright action, if there is a likelihood of success on the merits, there is a presumption the other elements will be satisfied.
This rule makes sense. If the plaintiff is likely to show copyright infringement, there is a clear interest in enforcing the copyright law to prevent unfair copying.
Conversely, if the plaintiff is not likely to succeed, there would be a clear interest in not interfering with fair competition and
free speech by enjoining uses of unprotected works.
To win a copyright case, the plaintiff must (1) show ownership of a valid copyrighted work and (2) copying of that work by the defendants.
To make a prima face case of ownership, plaintiff can rely on its copyright registration, thus shifting the burden to the defendant to show invalidity.
To show copying, a plaintiff can put forward either direct evidence, or evidence tending to show access and substantial similarity.
Analysis
The Plaintiff makes a showing likely to satisfy the second prong, copying, but not the first prong, ownership of a valid copyright. The court will address the second prong first.
Copying: Access
Both Defendants had access to the Union design. Defendant Southern had access to the Union pattern when Ward worked for Plaintiff. As to Defendant Ashley, Adair ordered a sample from Plaintiff, and Yulong Coating had access to the work before the period of alleged infringement. This third party contact may be used to infer access.
Defendants argue that these instances cannot constitute access, as they occur after Yulong allegedly independently created SHDT6357. This argument is best handled under the question of ownership.
For the element of access, Plaintiff need only show that the Defendants had an opportunity to copy the work by virtue of their access to it. As both Defendants had access to the work, this element would likely be met. Furthermore, the design was prevalent in the relevant marketplace, so Plaintiff could also show access through widespread dissemination.
Copying: Substantial Similarity
The Plaintiffs and Defendants’ works are substantially similar. While the substantial similarity test is not subject to precise definition, it is met “if a reasonable, ordinary observer, upon examination of the two works, would ‘conclude that the defendant unlawfully appropriated the plaintiffs protectable expression.’ ”
“ ‘Slight or trivial variations between works will not preclude a finding of infringement under the ordinary observer test.’ ”
On the other hand, “ ‘[i]f the points of dissimilarity not only exceed the points of similarity, but indicate that the remaining points of similarity are, within the context of plaintiffs work, of minimal importance, either quantitatively or quali
tatively, then no infringement results.’”
Color may be a factor in assessing similarity, but a slight or trivial variation in color will not preclude a finding of substantial similarity.
This court concludes that a jury confronted with the disputed fabric patterns is likely to find them to be substantially similar.
All of the designs are paisley and are defined by a central ovular droplet-like shape with five leaf like protrusions. Inside the ovular shape is a leaf-like structure which always contains fifteen petals in each pattern. Each of the five leaves protruding from the ovular shape contains internal leaves with petals. Although varying levels of quality can make the number of individual petals hard to discern, there are approximately the same number of petals per leaf in Union and in each of the infringing works.
In every design, a similar urn shaped arrangement appears to the left of and below the leftmost petal protrusion. To the left and above the left-most petal protrusion, all of the designs feature another structure which contains four leaf-like ovals, each of which contains a plant. In each of the parties’ designs, all of these plants has the exact same number of petals.
The identical nature of these details, combined with the very similar color and overall impression achieved when viewing the works, suggests that the ultimate finder of fact would likely find the designs to be strikingly and substantially similar.
Plaintiff argues that the similarities are so striking that the court should reject any evidence of independent creation. Plaintiff is likely correct that such a similarity exists that “no explanation other than copying is reasonably possible.”
But this fact does not prove that Defendants copied from the Plaintiff. Considering the disputed facts, it is possible that they both copied the design from some third source. The court must, therefore, determine if Plaintiff has a likelihood of success on the first prong of the infringement test, ownership of a valid copyright.
Ownership
Plaintiff has a valid copyright registration for the Union fabric design.
This registration “shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.”
But unlike the presumption afforded to more carefully examined patent applications, a defendant need not produce clear and convincing evidence in order to overcome a copyright registration.
Rather, the registration simply constitutes prima
facie evidence which places the burden on the defendant to come forward with evidence showing that the plaintiff did not originate the work.
In essence then, the registration serves to force the defendant to produce evidence of the invalidity of the copyright.
In the present case, the Defendants respond to this challenge and provide evidence to rebut Plaintiffs copyright registration. The Defendants contend that Yu-long developed the fabric design at issue and produce two sworn affidavits from Ward that accuse Jiang of stealing the Union design. This evidence of creation by a third party, combined with the striking similarity described above, creates a triable issue of fact as to whether Plaintiff owns the Union pattern. With the presumption afforded by the registration thus attacked, the court must instead look at the evidence to assess Plaintiffs likelihood of success. Considering all of the disputed facts and bald accusations flying between the parties, the court is unable to make any credibility determinations sufficient to conclude that the Plaintiff has a likelihood of success on the merits. With the record as is, in an exercise of its discretion, this court will not grant the weighty relief of a preliminary injunction.
The First Circuit Court of Appeals notes that it is inappropriate to proceed on affidavits in a preliminary injunction context
where the affidavits are sharply at odds.
In such cases, an evidentiary hearing may be useful to help resolve the issue.
As none of the parties to this case requested such a hearing, this court will rule on the preliminary injunction using only affidavits. When these kinds of credibility determinations must be made, courts generally do not issue a preliminary injunction, but rather leave the issue for a jury to resolve.
Without reliable evidence procured through discovery and cross examination, the court has no meaningful basis from which to conclude that Plaintiff is sufficiently likely to prevail that a preliminary injunction would be justified.
Plaintiff attempts to identify several inconsistencies in Defendants’ affidavits and argues that the affidavits themselves reveal who is telling the truth. Plaintiff argues that if Yulong invented similar fabric designs in 2002, Yulong would have some record of marketing the fabrics prior to the period of alleged infringement. While this point might be proven after discovery, at present the court cannot conclude that a lack of sales receipts shows Yulong is lying. First, Yulong swears that one of the related fabrics did have “great demand in the market.”
Secondly, a lack of sales might not prove a lack of invention. Yulong could have invented the fabric, and not realized its profitability until after the Plaintiff (or even Art Cottage) stole it and successfully marketed it. The court does not mean to imply that it believes that this is what happened. Instead, this example simply shows that without more complete evidence, the current contradictory affidavits before the court support many possible explanations.
Plaintiff also argues that Ashley’s order of fifty yards of Union fabric through express shipment in 2004 belies Ashley’s argument that they were simply comparing fabrics. But, Adair swears that she simply followed standard practice.
The court is unwilling to find a likelihood of infringe
ment on the basis of one such rush order. While this fabric shipment shows Defendant Ashley’s access to the Union product, it does not prove that Ashley copied Plaintiffs valid copyrighted work.
Plaintiff also points to Ward’s inconsistent and uncertain assertions in his second affidavit regarding exactly what happened on any alleged trip Ward made to China with Jiang. Plaintiff argues that Ward would never have made such a trip and that he certainly didn’t make one with Jiang. Ward’s uncertainties regarding the China trip are not enough for this court to conclude he lied when he swore that “ACHF’s Union fabric that is allegedly copyrighted is a copy or is derived from that fabric that Mr. Jiang brought back from China in 2002 or 2003.”
Plaintiff further argues that Ward’s story cannot be credited because the alleged trip occurred after the date Plaintiff says it purchased the Union pattern from Art Cottage. This argument, however, actually demonstrates an important weakness in Plaintiffs own preliminary evidence; Plaintiffs purchase of the pattern is uncorroborated. Jiang avers that the Plaintiff bought the pattern at issue from Art Cottage,
but his only proof is an invoice bearing the name Louise 019C.
The invoice contains no picture or other proof that the pattern now known as Union is actually the pattern purchased. Plaintiff does not include any affidavit from Art Cottage or the actual creator of the work. This fact does not mean that Jiang is lying. It does mean that the court has no basis to credit Jiang’s testimony over that of Ward and Gao. That the affidavits are contradictory does not prove that Plaintiff is right, but rather, once again illustrates the inappropriateness of preliminary injunctive relief.
Similarly, Plaintiff argues that Yulong’s claim of invention is not credible because Yulong is not known as a fabric designer.
In response, Yulong says that it has developed a number of fabrics, and provides photos of fabric it purportedly designed.
With no real reason to believe one party over another, this court is not prepared to make any speculative conclusions about Yulong’s reputation in the industry. Similarly, the alleged disputed admissions of liability are not evidence that bear probative weight sufficient to support a preliminary injunction.
The court is aware that Defendants will have the burden of rebutting the Plaintiffs copyright registration’s presumption of ownership before any ultimate fact finder. Nonetheless, considering the highly disputed evidence, the difficulty of making credibility determinations on these grossly inconsistent affidavits, and the lack of corroboration of Plaintiffs own claim to authorship, this court concludes that the Plaintiff is unable to show a likelihood of success on the merits. With this crucial factor in the test for preliminary injunctions not met, the court need not consider the parties arguments regarding irreparable harm.
Conclusion
The contradictory affidavits filed by the parties cry out for further development through discovery and cross examination. The Plaintiffs
Motion for Preliminary Injunction
is DENIED. An order will issue.