A paper goods company from Florida, Rifle
Paper, filed a copyright infringement suit against Walmart in the U.S. Middle
District of Florida Court. Hat Tip to Sarah Burstein who posted the complaint online.
The case is Rifle Holdings, LLC v. Wal-Mart
Stores,
6:17-cv-02105.
Plaintiff creates and sells all kind of paper
goods such as cards, calendars, and stationary. It sells them in its Florida
store, online and in several department and retail stores as well. The products
have been featured in several magazines, and Plaintiff actively promotes them
on social media.
Plaintiff owns by assignment the copyright of a
design created by Anna Bond, the “Spanish Rose Design”, which is registered
with the U.S. Copyright Office. The pattern features small and big roses, some
in red, others in pink, with a black center, surrounded by leaves and baby’s
breath. The background of the print is dark blue.
 |
| The protected work, the Spanish Rose design |
This design has been used on several of
Plaintiff’s products, including a phone case, a greeting card, a notebook, and other
cards sold throughout the U.S. since 2013. The design has also ben licensed to
fashion company Paper Crown, owned by former television actress Lauren Conrad.
The complaint alleges that Beco, a company
designing and manufacturing home-textiles goods sold at Wal-Mart under Wal-Mart’s
brand “Mainstays”, copied the Spanish Rose Design in several products which
were then sold at Wal-Mart. Plaintiff claims that the designs at stake are
similar, but for a change of color for the roses, and leaving out details from
the original design, such as the baby’s breath. The allegedly infringing pattern
was then used on sheets, covers, boxes, plates, shower curtains, even
furniture. The pattern is sold with a dark blue background and with a white
background.
Plaintiff first noticed this use in October
2017 and sent Beco a cease-and-desist letter to Wal-Mart, which informed its manufacturer
of the matter (the letter is reproduced in the complaint as one of the exhibits).
The allegedly infringing products continued to be sold at Wal-Mart stores and
Plaintiff filed this copyright infringement suit.
Fabric and paper designs are protected by U.S.
copyright, unlike fashion designs, and the Spanish Rose has been dully
registered. It is undoubtedly original enough to be protected by copyright.
Therefore, the crux of the case will be whether the Spanish Rose design has
indeed been copied. Also, not all acts of copying are actionable, as some
elements of the designs may not be protected by copyright, whereas they are mere
ideas or concepts, or are using elements which are the public domain.
How much copying is
infringing?
In a 1960 fabric design case, Peter Pan Fabrics, Inc. v. Martin Weiner Corp, famous judge Learned Hand wrote
that “[t]he test for infringement of a copyright is of necessity vague,”
adding that “[i]n the case of designs, which are addressed to the aesthetic
sensibilities of an observer, the test is, if possible, even more intangible.”
In our case, Plaintiff will be easily able to
prove that defendant had access to the designs, which are sold in stores around
the U.S. and thus will not have to demonstrate that the original work and the alleged
infringing work are “strikingly similar.”
Instead, it will have to prove that there are “substantial
similarities” between the work protected by copyright and the allegedly
infringing work.
Courts use different substantial similarities
tests, depending on their circuit. Florida is in the 11th Circuit,
which finds substantial similarity "where an average lay observer would
recognize the alleged copy as having been appropriated from the copyrighted
work."
In order to decide whether the protected
elements of two works are substantially similar, courts in the 11th
Circuit “compare the various components of the two works, but are mindful that lists
of similarities are inherently subjective and unreliable, particularly where
the lists contain random similarities, and many such similarities could be
found in very dissimilar works”, Baby Buddies, Inc. v. Toys" R" Us,
Inc.
Proving
or denying copying is no bed of roses. Will Wal-Mart try to settle? Stay tuned…
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