HQ 458962 - Suspected infringement of fabric design pattern # 816 (Customs ACS Recordation No. Cop-93-00063; Copyright Registration No. VA 522 719) - United States International Trade Commision Rulings

United States International Trade Commision Rulings And Harmonized Tariff Schedule

faqs.org Rulings By Number Rulings By Category Tariff Numbers

faqs.org > Rulings and Tariffs Home > Rulings By Number > 1995 HQ Rulings > HQ 226271 - HQ 545187 > HQ 458962

CPR-3 CO:R:IT:I 458962 VEA

CATEGORY: COPYRIGHT

District Director
U.S. Customs Service
San Francisco, California
Attn: Kyle Allard

RE: Suspected infringement of fabric design pattern # 816 (Customs ACS Recordation No. Cop-93-00063; Copyright Registration No. VA 522 719)

Dear Sir:

Your correspondence dated September 1, 1994, requests our opinion on whether a shipment of quilts containing fabric swatches which bear a rose pattern infringe the above-referenced copyright recorded with U.S. Customs.

FACTS:

You forwarded samples of two quilts to this office for our opinion on whether they infringe copyrighted fabric design pattern # 816 owned by Concord Fabrics Incorporated. The imported articles are part of a shipment listed as entry number 607-0133790-3. They contain fabric swatches which bear a rose pattern suspected of infringing pattern # 816. The importer, Unique Quilts, admitted to Customs officials in a telephone conversation that it had copied the protected pattern.

ISSUE:

Whether the fabric swatches on the imported quilts infringe Concord Fabric's copyrighted pattern # 816?

LAW AND ANALYSIS:

Section 602(b) of the Copyright Act, 17 U.S.C. Section 602(b) prohibits the importation of articles which infringe a copyright. Under Section 603(b)(2), the person seeking exclusion of infringing merchandise pursuant to Section 602(b) must furnish proof, of a specified nature and in accordance with prescribed procedures, that the copyright in which such person claims an interest in is valid and that the importation would violate the prohibition in Section 602 of the Copyright Act.

To prove infringement in copyright cases, the copyright owner must demonstrate: (a) ownership of a valid copyright; (b) unauthorized copying of the protected material; and (c) that the copying constituted unlawful appropriation. Arnstein v. Porter, 154 F. 2d 464 (2nd

Cir. 1946) and Warner Bros, Inc. v. American Broadcasting Companies, 654 F. 2d 204 (2nd Cir. 1981). We note that courts have held that the scope of copyright protection for fabric designs is narrow and extends only to the work's particular expression of an idea, not to the idea itself. See: Folio Impressions, Inc. v. Byer California; Macy's New York, Inc.; Lida Manufacturing Co.; and John Does, 937 F.3d 759 (2nd Cir. 1991). Since roses are articles which appear in nature, we would only grant copyright protection to the particular roses and pattern in which they are arranged.

Under Section 410 of the Copyright Act, 17 U.S. C. Section 410(c), "a certificate of registration made before or within five years after the first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate". Concord Fabrics Inc. has provided Customs with a copy of the registration certificate issued by the U.S. Copyright Office for the pattern allegedly infringed in this case.

Proof that a copyrighted work has been copied may be shown by direct or indirect evidence. Direct evidence may include an admission of copying by the importer or testimony by a witness to the copying {cite to case}. The importer has admitted to copying the copyrighted pattern. Thus, the only question to resolve is whether the copying unlawfully appropriates the protected work.

Courts generally apply a "substantial similarity" test to determine whether an infringing article unlawfully appropriates a copyrighted work. A finding of substantial similarity means that the infringing article copies a substantial and material amount of the protected work. Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F. 2d 607 (7th Cir. 1982), cert denied, 459 U.S. 880 (1992). The standard courts apply to determine whether an alleged infringing article is "substantially similar" to a copyrighted work is that of the "ordinary observer". Using the ordinary observer test, courts have held that an article is infringing if it is so similar to the copyrighted work that an ordinary reasonable person would conclude that it unlawfully appropriates a substantial and material amount of the copyrighted work.

Applying this test to the imported articles, we find that the quilts at issue contain a flower pattern which is substantially similar to that of the copyrighted pattern. The copyrighted pattern consists of numerous open rose petals arranged in various horizontal, vertical and up and down positions which are located in close proximity to each other on the fabric. The open petals are surrounded by three or four completely open petals. The imported articles contain fabric swatches which incorporate roses arranged in an identical pattern. Thus, an "ordinary reasonable person" would conclude that they unlawfully appropriate a substantial and material amount of the copyrighted pattern.

HOLDING:

We find that the fabric swatches on the imported quilts infringe Concord Fabric's copyrighted pattern #816. Therefore, they are subject to seizure and forfeiture under 17 U.S.C. Section 603 and 19 C.F.R. Section 133.42 of the Customs Regulations. If it is shown to the satisfaction of the District Director that the importer had no reasonable grounds for believing that its actions constituted a violation of the law, the article may be returned to the country of export pursuant to 19 C.F.R. Section 133.47.

John F. Atwood, Chief
Intellectual Property Rights Branch

Previous Ruling Next Ruling