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…