Milliken & Co. v. Shaw Industries, Inc.

Citations: 978 F. Supp. 1155; 1997 U.S. Dist. LEXIS 16137; 1997 WL 610027Docket: 1:96-cv-00246

Court: District Court, N.D. Georgia; September 23, 1997; Federal District Court

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Milliken Company, the plaintiff, has filed two motions: one for leave and another for a jury trial, while the defendants, Shaw Industries and Buchanan Industries, have moved for summary judgment. The case involves copyright claims concerning competing carpet designs in the hospitality industry. Milliken created its "Bird of Paradise" carpet design in 1989 and received a copyright certificate based on a swatch submitted to the Copyright Office. Shaw introduced its own "Bird of Paradise" design in 1993 without seeking copyright protection. Milliken alleges that Shaw's design infringes on its copyright, asserting that both patterns share four specific design elements (stylized flowers, an inner helical chain border, a willow leaf border, and an outer linear border). The defendants argue that their design is distinct and lacks substantial similarity to Milliken's.

The court outlines the standard for summary judgment, stating that it is appropriate when no genuine material facts are in dispute, and the moving party is entitled to judgment as a matter of law. The initial burden is on the party seeking summary judgment to demonstrate the absence of genuine issues of material fact. If they fail, the motion is denied. If they succeed, the burden shifts to the nonmoving party to show that a material fact issue exists that precludes summary judgment.

The nonmoving party is required to present specific facts through affidavits, depositions, or other evidence to demonstrate a genuine issue for trial, as established in Russ v. International Paper Co. and other precedents. The court must evaluate the evidence favorably for the nonmoving party, drawing justifiable inferences in their favor. To counter a motion for summary judgment, the nonmoving party must provide evidence sufficient to challenge the moving party's claims, particularly when the moving party bears the burden of proof at trial. If the nonmoving party also bears the burden of proof, they must present evidence that could withstand a directed verdict motion. Additionally, if the moving party merely identifies a lack of evidence on a material fact, the nonmoving party can either demonstrate overlooked evidence or introduce new evidence to support their case.

The plaintiff has filed two motions for leave: one to respond to the defendant's reply brief and another regarding new case law. The court has reviewed the motions and denies both.

Regarding the defendants' motion for summary judgment, the plaintiff must establish ownership of the copyright and proof of copying by the defendant to succeed in a copyright infringement claim. The plaintiff has provided a copyright registration certificate, which serves as prima facie evidence of a valid copyright if filed within five years of publication. The defendants challenge the validity of the copyright, claiming the plaintiff did not deposit two copies of the design as required by 17 U.S.C. 408(b)(2). However, according to 17 U.S.C. 408(c)(1) and 37 C.F.R. 202.20(c)(2)(x), the deposit of one swatch of carpeting is sufficient under regulatory provisions. Therefore, the defendants' argument regarding the validity of the plaintiff's copyright based on the deposit requirement is rejected, and they are not entitled to summary judgment on this basis.

Defendants assert that Plaintiff's copyright is invalid because the submitted carpeting swatch only partially represents the complete design. While 17 U.S.C. § 408(b)(1) mandates the submission of complete designs, failure to do so does not invalidate the copyright registration or impede a copyright infringement claim. The copyright registration requires specific information about the applicant and the work, as outlined in 17 U.S.C. § 409, and case law indicates that unintentional errors do not undermine the presumption of validity of a registration certificate. There is no evidence of intentional or fraudulent omission by the Plaintiff, nor is there proof that the Copyright Office would have rejected the application had it received a complete design swatch. Consequently, Defendants are not entitled to summary judgment on this matter.

Regarding the alleged copying of the work, a Plaintiff can demonstrate copying through direct or indirect evidence. The Plaintiff claims direct evidence exists, citing handwritten notes on a Design Request Form as proof that Defendant Shaw copied its design. Although the Court does not view these notes as definitive evidence, it finds sufficient grounds to prevent summary judgment concerning direct copying evidence. For indirect evidence, a plaintiff must show that the defendant had access to the original design and that the two designs are substantially similar, which raises a presumption of copying. The Defendants have conceded access to Plaintiff's design, leaving the question of substantial similarity as the only remaining issue to be resolved.

Substantial similarity between a copyrighted work and an alleged infringing copy is established when an average lay observer would recognize the copy as appropriated, despite any differences that may exist. Differences are only significant if they negate the infringement claim. The focus is on the expression of the idea rather than the idea itself. In this case, both parties created corridor designs featuring tropical flora, but the Defendants' argument highlighting differences does not suffice if an ordinary observer would overlook them and perceive the designs as aesthetically similar. The Plaintiff's design uniquely combines Bird of Paradise flowers with willow-like leaves, framed by spiral and outer borders of more willow-like leaves. A question of material fact arises regarding the substantial similarity of the designs, making summary judgment on the infringement claim inappropriate.

Regarding the Plaintiff's request for a jury trial, the failure to demand one at the outset was deemed inadvertent. The court referenced Parrott v. Wilson, which mandates granting a jury trial request unless there are strong reasons against it. The first factor assessed is whether the case is suited for jury resolution, particularly concerning whether the Defendant copied the Plaintiff’s design. The issue of substantial similarity, determined by an average lay observer's perception, is appropriate for jury consideration. The second factor, concerning potential disruption to court schedules, favors the Plaintiff, as granting the motion would not cause interference. Lastly, regarding potential prejudice to Defendants, the Court finds that their claims of having altered discovery strategies lack specificity and do not constitute a compelling reason to deny the motion. Thus, the Court leans toward granting the Plaintiff's motion for a jury trial.

The Court determines that the Plaintiff's motion for a jury trial is granted despite the delay in filing. The delay, which spanned eight months beyond the ten-day requirement after the last pleading, weighs against the Plaintiff. The reason for this delay, cited as simple inadvertence, also does not favor the Plaintiff, as established by Eleventh Circuit precedent allowing discretion in denying such motions for lack of a compelling reason. Nonetheless, the Court emphasizes the constitutional importance of the right to a jury trial and finds no strong reason to deny the Plaintiff this right. Consequently, the motion for a jury trial is granted, and the case will be scheduled for the November jury trial calendar. Additionally, the Court directs the parties to submit a Consolidated Pre-Trial Order within 30 days. The Court denies the Plaintiff's Motions for Leave and the Defendants' Motion for Summary Judgment.