Design Ideas Ltd v. Meijer, Inc. et al

Filing 115

OPINION entered by Judge Sue E. Myerscough on 8/25/2016. Because the undisputed facts show that Defendants infringed on Plaintiff's valid copyright, Plaintiff's Motion for Partial Summary Judgment, d/e 96 is GRANTED. Defendants' Motion for Partial Summary Judgment on Plaintiff's Copyright Claims, d/e 68 and Motion for Summary Judgment, d/e 71 are DENIED. (SEE WRITTEN OPINION) (MAS, ilcd)

E-FILED

Thursday, 25 August, 2016 01:49:29 PM
Clerk, U.S. District Court, ILCD

IN THE UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF ILLINOIS
SPRINGFIELD DIVISION
DESIGN IDEAS, LTD., an Illinois
Corporation,
Plaintiff,
v.
MEIJER, INC., a Michigan
corporation; WHITMOR, INC.,
a Delaware corporation; and
THE TJX COMPANIES, INC.,
a Delaware corporation,
Defendants.

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No. 15-cv-03093

OPINION
SUE E. MYERSCOUGH, U.S. District Judge.
The parties have filed partial motions for summary judgment.
Because the undisputed facts show that Defendants infringed on
Plaintiff’s valid copyright, Plaintiff’s Motion for Partial Summary
Judgment (d/e 96) is GRANTED. Defendants’ Motion for Partial
Summary Judgment on Plaintiff’s Copyright Claims (d/e 68) and
Motion for Summary Judgment (d/e 71) are DENIED.

I. INTRODUCTION
Plaintiff is an Illinois corporation engaged in the business of
creating, manufacturing, and distributing a range of decorative
housewares. Plaintiff originally filed suit in May 2015. On
November 10, 2015, Plaintiff filed a First Amended Complaint
against Defendants Meijer, Inc. (Meijer), Whitmor, Inc. (Whitmor),
and the TJX Companies, Inc. (TJX). Meijer is a Michigan
corporation with its principal place of business in Grand Rapids,
Michigan. Meijer’s website describes the company as a privatelyheld company that has manufacturing facilities, distribution
centers, and 200 stores.
Whitmor is a Delaware corporation with its principal place of
business in Southaven, Mississippi. Whitmor’s website indicates
that Whitmore is a family-owned business and privately held
company that has been “bringing organization home” to consumers
around the world. Whitmore makes products that are sold at
numerous stores, such as Amazon, Target, and Wal-Mart. TJX is a
Delaware corporation with its principal place of business in
Framingham, Massachusetts. TJX does business under the names
Marshalls, T.J. Maxx, and HomeGoods.
Page 2 of 56

Plaintiff alleges numerous causes of action against
Defendants, including copyright infringement under the Copyright
Act of 1976, federal unfair competition under the U.S. Trademark
Act, violations of the Digital Millennium Copyright Act, common
law unfair competition, the Illinois Consumer Fraud and Deceptive
Practices Act, and breach of contract. See First Am. Compl. ¶ 1
(d/e 42). As is relevant to the pending motions for summary
judgment, Plaintiff alleges that Defendants have infringed on
Plaintiff’s copyrighted product, Sparrow Clips. A Sparrow Clip is a
clothespin with a silhouetted bird design on top. See Appendix 1
(image of Sparrow Clips). Plaintiff seeks partial summary
judgment on Count I (copyright infringement) that (1) Plaintiff
“owns a valid copyright to its SPARROWCLIPS work” and (2)
Defendants “infringed that copyright by producing and selling
exact copies of [Plaintiff’s] protected expression.” Pl. Mot. at 68
(d/e 96).
Defendants seek partial summary judgment on Count I
(copyright infringement) and Count IV (violation of the Digital
Millennium Copyright Act). Defendants argue that both Counts I
and IV require a valid copyright as a necessary element of those
Page 3 of 56

claims. According to Defendants, Plaintiff cannot prove the
existence of a valid copyright because Sparrow Clips are not
sufficiently creative to be copyrightable, and the Sparrow Clips are
useful articles not subject to copyright protection.
II. BACKGROUND
The parties dispute the materiality and/or accuracy of many
of the facts in this case. Taking into account those disputes, the
Court sets forth the following factual background.
1.

Pititas Waiwiriya created the bird clothespin design and
sold the copyright to Plaintiff.
In 2007, Pititas Waiwiriya of Thailand created the bird-

clothespin design that is the basis for the Sparrow Clips. He took
inspiration from his memories of playing in his family’s garden
with birds and from a visit to his mother’s house in the country
where Mr. Waiwiriya saw birds landing, perching, and taking off
from a clothesline. Mr. Waiwiriya was also influenced by the
Danish architect, Arne Jacobsen, and he sought to make a birdclothespin sculpture that presented a sleek, modern design.
Mr. Waiwiriya used computer-aided design software to create
his bird design, first by drawing linear geometric shapes, which he
Page 4 of 56

then rounded and merged into the bird silhouette shape. He did
not copy the two-dimensional outline or three-dimensional shape
of his bird design from any source. Mr. Waiwiriya’s intention in
creating the bird-clothespin sculpture was to create an art piece
and not a product for sale.
Mr. Waiwiriya first displayed the bird-clothespin design at the
Living Design Center Ozone exhibition during the 2007 Tokyo
Design Week. The initial design featured a clipping mechanism
that was not strong enough to hold anything or stand up straight.
That is, Mr. Waiwiriya intended that the clipping mechanism be
used to attach the bird to objects as decoration but not for objects
of weight to hang from the clip. A visitor to the art fair suggested
that Mr. Waiwiriya improve the clip so that he could use the design
to hang items from the clip and sell it to others for that purpose.
Mr. Waiwiriya subsequently improved the clip’s spring so that the
“bird pin design” could hold items. Declaration ¶ 17 (d/e 113).
In 2008, Mr. Waiwiriya exhibited his bird-clothespin design at
the Bangkok design fair, where Plaintiff’s president, Andy Van
Meter, saw the product and expressed his interest in purchasing it.

Page 5 of 56

The parties dispute whether Mr. Waiwiriya sold his bird-clothespin
design to Plaintiff in July 2008.
According to Plaintiff, Mr. Waiwiriya executed a Royalty
Agreement on July 2, 2008 that transferred to Plaintiff “the entire
right, title and interest in and to the Products and worldwide
Intellectual Property on such Products.” See Mr. Waiwiriya
Declaration ¶ 23, Ex. M (copy of an unexecuted Royalty Agreement
that Mr. Waiwiriya purportedly received in 2008) (d/e 113). The
Royalty Agreement provided that the term “Products” meant “all
products listed on Exhibit A of this Agreement.” Id.
Exhibit A, which specifically indicated that the Exhibit was
“part and parcel of the Royalty Agreement,” identified the Products
as “Sparrow Clip.” Exhibit A provided for an advance to Mr.
Waiwiriya of $3,100 and payment of a 4% royalty on sales of his
bird-clothespin design exceeding $37,000. Mr. Waiwiriya also
retained the rights to sell the listed item in Thailand and France
and the right to display and sell the item in Design Boom, a digital
magazine for architecture and design.
However, Plaintiff has been unable to locate a signed copy of
the 2008 Royalty Agreement but has located a copy of Exhibit A to
Page 6 of 56

the 2008 Royalty Agreement signed by Plaintiff and Mr. Waiwiriya.
On March 23, 2013, after Plaintiff discovered that it could not
locate a copy of the 2008 Royalty Agreement with Mr. Waiwiriya’s
signature, Mr. Waiwiriya signed a Royalty Agreement that Plaintiff
claims ratified the 2008 agreement. Defendants dispute that the
2013 agreement ratified any 2008 agreement. As will be discussed
further in the analysis portion of this Opinion, the date Mr.
Waiwiriya transferred the copyright to Plaintiff is important
because a plaintiff cannot bring an infringement action unless he
was the owner of the copyright at the time the infringement
occurred or received an assignment of the right to sue for copyright
infringement that occurred before the transfer of ownership.
The parties do not dispute that Chris Hardy, Plaintiff’s design
director, selected the colors for the Sparrow Clips. Mr. Hardy
looked through different books of color chips from the Pantone
Company, which contains thousands of colors. Mr. Hardy selected
the green, blue, orange, and red colors used for the Sparrow Clips.
Defendants do not dispute that Hardy did not copy his selection of
colors for the Sparrow Clips from any source, although they
contend the fact is immaterial. While Plaintiff claims to distribute
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Sparrow Clips in sets of the four colors selected by Mr. Hardy,
Defendants dispute this, asserting that the Sparrow Clips are also
sold in black. In fact, in July 2013, Plaintiff and Mr. Waiwiriya
executed a separate “Exhibit A” for black Sparrow Clips.
Plaintiff began marketing Sparrow Clips in its 2009 catalog
and has featured Sparrow Clips in its catalogs ever since.
Plaintiff’s catalogs feature prominent copyright notices indicating
that the product designs contained in the catalogs, and not just
the catalogs themselves, are protected by copyright. On April 11,
2013, one week after Plaintiff filed for a copyright on the Sparrow
Clips, as discussed in more detail below, Plaintiff filed an
amendment with the Copyright Office pertaining to the 2009
catalog. Plaintiff stated that Plaintiff “is not claiming as part of the
above-referenced copyright, the ‘Sparrow Clips’ featured on page
164 of the deposit.” Defs. Opp. Ex. V (d/e 107-21). The reference
to “deposit” apparently refers to the catalog that was deposited
with the Copyright Office. See, e.g., Design Ideas, Ltd. v. Yankee
Candle Co., Inc., No. 10-cv-3217, 2011 WL 1827981, at *1 (C.D.
Ill. 2011) (noting that the Spring 2006 catalog was deposited with
the registration filed with the U.S. Copyright Office).
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According to Plaintiff, the packaging for Sparrow Clips
contains prominent copyright notices indicating that the product
design is protected by copyright. Defendants dispute this,
asserting that the packaging contains a single copyright notice on
the back side and that there is no indication that the notice applies
to the actual Sparrow Clip but instead plainly applies to the text of
the packaging. In that text, Plaintiff advertises Sparrow Clips as
“fashionable as well as functional.”
2.

Plaintiff solicited additional designs from Mr. Waiwiriya
in 2011.
Defendants claim that the evidence shows that Mr. Waiwiriya

did not transfer the copyright to Plaintiff in 2008 and that the bird
design is a useful article not subject to copyright.
In February 2011, Plaintiff solicited from Mr. Waiwiriya other
designs that might be as successful as the Sparrow Clips. Mr.
Waiwiriya submitted several additional products using the Sparrow
Clips bird design, including a drink stirrer, wine stopper (using the
bird design as a handle), and party picks, as well as Sparrow Clips
with a faux wood grain appearance. Mr. Waiwiriya’s presentation
also showed the Sparrow Clips clipped to a clothesline from the
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clothespin portion as well as hanging from the beak of the bird
design. In addition, Mr. Waiwiriya sent Plaintiff photos of a
paperclip using the same Sparrow design.
Defendants assert—and Plaintiff disputes—that Plaintiff did
not assert ownership in any of these Sparrow designs submitted by
Mr. Waiwiriya and felt it necessary to license rights to the
additional designs. According to Defendants, such acts are
inconsistent with an assignment of the copyright in 2008. Plaintiff
disputes that the additional product designs used the same
Sparrow design because the designs differed in size, dimensions,
and materials used for the Sparrow Clips. Plaintiff also claims the
facts pertaining to other products are immaterial.
In any event, Plaintiff and Mr. Waiwiriya ultimately negotiated
an agreement regarding the Sparrow Wine Stopper, although the
nature of the agreement is unclear in the summary judgment
record. Defendants claim the parties negotiated a license, based
on the use of that term in emails between Mr. Waiwiriya and
Plaintiff’s Thailand associate, Kamphol “Be” Srisamutngam.
Plaintiff contends that Mr. Srisamutngam is not an attorney, that
the word “license” was translated from Thai, and that he did not
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mean the term “license” as legally defined because Plaintiff never
licenses designs for goods that it sells.
3.

The New Clothesline Company identified another use for
the Sparrow Clips.
In January 2012, the New Clothesline Company contacted

Plaintiff about purchasing Sparrow Clips for resale. Carol Bildahl,
the owner of the New Clothesline Company, wanted to use Sparrow
Clips for the Company’s clothes drying rack. Ms. Bildahl told
Plaintiff that “currently we open the back of the bird and snap it
onto the rung of our LOFTi, our rack[.]” The New Clothesline
Company placed a purchase order for Sparrow Clips.
The packaging for the Sparrow Clips for the New Clothesline
Company shows the bird-portion of the clip hanging over a rod.
See Appendix 2. Plaintiff contends that the packaging for the
Sparrow Clips for the New Clothesline Company was directed by
the New Clothesline Company, not Plaintiff. Plaintiff claims it did
not change or alter the Sparrow Clips in any way for the New
Clothesline Company. Defendants do not dispute that Plaintiff has
not changed the shape of the Sparrow Clips since 2008. See Defs.
Opp. at 7, ¶ 73 (d/e 107).
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4.

Defendants’ purchased the Sparrow Clips and allegedly
infringed the Copyright.
In 2011, Defendants TJX purchased Sparrow Clips from

Plaintiff. In 2012, Defendant Meijer purchased Sparrow Clips from
Plaintiff.
In 2012, Meijer stopped purchasing Sparrow Clips from
Plaintiff. Plaintiff asserts—and Defendants dispute—that
Defendant Meijer worked with Defendant Whitmor to produce
Sparrow Clips knock-offs and that Whitmor sourced the knock-offs
from a Chinese manufacturer. Plaintiff further asserts, and
Defendants dispute, that Whitmor sent Sparrow Clips to a Chinese
manufacturer, who acknowledged receipt and began preparing
copies for Whitmor. The emails on which Plaintiff relies provide as
follows.
In an email dated September 11, 2012, “Maisie” from
[e-mail], sent an email to Chris at
[e-mail] and a recipient named “james” stating: “We
just receive[d] 1 set sparrow clips samples from Whitmor. We will
send you quote ASAP. Pls confirm if you need samples for review
as well.” Pl. Mot., Ex. 14 (d/e 96-14), (d/e 95-6 sealed). The email
Page 12 of 56

also contained a picture of Plaintiff’s Sparrow Clips. Whitmor’s
Chris O’Brien responded by email, stating: “Do you have a source
that has the existing mold? If so, please inquire with them if the
design is patented. For now, just send me the price exactly as it is
currently packaged packed in a 12 carton master. Please advise
MOQ when you quote.” Id. Defendants argue that these emails do
not support Plaintiff’s assertions and that the emails are
inadmissible because Plaintiff does not offer any evidence
authenticating them.
Whitmore sold its Canary Clips to Defendants TJX and
Meijer. Meijer and TJX sold Canary Clips to its customers in 2013
and 2014. Plaintiff claims, and Defendants dispute, that the
copies sourced by Whitmor and distributed to Meijer are identical
copies. See Appendix 3 (showing Sparrow Clips and the Canary
Clips distributed to Meijer). Plaintiff claims, and Defendants
dispute, that the copies sourced by Whitmore and distributed to
TJX are nearly identical copies—that the bird shape and size are
identical and the colors are similar to Plaintiff’s colors. See
Appendix 4 (showing Sparrow Clips and the Canary Clips
distributed to TJX).
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5.

Plaintiff registered the copyright for Sparrow Clips.
On April 4, 2013, Plaintiff submitted a copyright application

to the U.S. Copyright Office for the Sparrow Clips identifying the
product as a “sculpture.” Plaintiff included a picture of the
Sparrow Clips with the clothespin portion being used to hold a
sack lunch closed and to hang socks and papers. See Appendix 5.
The application listed a publication date of December 31, 2008. .
See 17 U.S.C. § 101 (defining “publication” as “the distribution of
copies or phonorecords of a work to the public by sale or other
transfer of ownership, or by rental, lease, or lending. The offering
to distribute copies or phonorecords to a group of persons for
purposes of further distribution, public performance, or public
display, constitutes publication. A public performance or display of
a work does not of itself constitute publication.”).
The effective date of copyright registration is the day on which
the application, deposit, and fee (which are later determined to be
acceptable) have been received. 17 U.S.C. § 410(d). Amendments
do not affect the earlier date of the initial registration. Gener-Villar
v. Adcom Group, Inc., 560 F. Supp.2d 112, 127 (D. P.R. 2008)
(citing 17 U.S.C. § 408(d)). On May 29, 2013, the Copyright Office
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issued a registration certificate No. VA 1-867-185 for the Sparrow
Clips.
On August 6, 2015, Plaintiff submitted an amendment to the
Sparrow Clips registration because it had erroneously designated
the product as a “work for hire.” On August 18, 2015, Plaintiff
submitted another amendment to correct the date-of-first
publication information included in its 2013 Application to be
October 30, 2007. On August 31, 2015, Plaintiff submitted yet
another amendment, this time to claim copyright in Plaintiff’s color
selection as a contribution of authorship. See, e.g., 17 U.S.C. §
201(a) (“the authors of a joint work are co-owners of copyright in
the work”); 17 U.S.C. § 201(c) (“Copyright in each separate
contribution to a collective work is distinct from copyright in the
collective work as a whole, and vests initially in the author of the
contribution);; 17 U.S.C. § 101 (defining a “joint work” as “a work
prepared by two or more authors with the intention that their
contributions be merged inseparable or interdependent parts of the
unitary whole”).

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III. THE PARTIES’ MOTIONS
The parties have filed cross-motions for partial summary
judgment. Defendants seek summary judgment on Count I
(Copyright Infringement) and Count IV (violation of the Digital
Millennium Copyright Act) on the ground that both claims require
a valid copyright as an element of the claim. Defendants contend
that Plaintiff cannot prove the existence of a valid copyright
because the claimed copyrighted article—the Sparrow Clips—is a
useful article and not subject to copyright protection. Defendants
also claim that the Sparrow Clips are not sufficiently creative to be
copyrightable.
Plaintiff seeks partial summary judgment only on Count I,
copyright infringement. Plaintiff asserts that the undisputed facts
show that the Sparrow Clips are the subject of a valid copyright,
Plaintiff is the legal owner of the copyright, and Defendants copied
protected expression in the Sparrow Clips work. In response,
Defendants assert that: Plaintiff has not established that it owned
the Sparrow Clips copyright when the alleged infringement
commenced, Plaintiff committed fraud on the Copyright Office
when it registered the copyright, and a genuine issue of material
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fact remains whether Sparrow Clips are sufficiently creative to
receive copyright protection. Defendants also claim that the
Sparrow Clips are a useful article not subject to copyright
protection.
IV. LEGAL STANDARD
Summary judgment is proper if the movant shows that no
genuine dispute exists as to any material fact and that the movant
is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a).
The movant bears the initial responsibility of informing the court of
the basis for the motion and identifying the evidence the movant
believes demonstrates the absence of a genuine issue of material
fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). No
genuine issue of material fact exists if a reasonable jury could not
find in favor of the nonmoving party. Brewer v. Bd. of Trs. of the
Univ. of Ill., 479 F.3d 908, 915 (7th Cir. 2007). When ruling on a
motion for summary judgment, the court must consider the facts
in the light most favorable to the nonmoving party, drawing all
reasonable inferences in the nonmoving party's favor. Woodruff v.
Mason, 542 F.3d 545, 550 (7th Cir. 2008).

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V. ANALYSIS
To establish copyright infringement, Plaintiff must prove: “(1)
ownership of a valid copyright, and (2) copying of constituent
elements of the work that are original.” Feist Publ’ns, Inc. v. Rural
Tel. Serv. Co., Inc., 499 U.S. 340, 360 (1991). “Copying” in this
context means infringing any of the exclusive rights of the
copyright owner. Marobie-FL, Inc. v. Nat’l Ass’n of Fire Equip.
Distrib. & Nw. Nexus, Inc., 983 F. Supp. 1167, 1172 n.1 (N.D. Ill.
1997). The copyright owner has the exclusive right to reproduce
the work, prepare derivative works, distribute copies of the work to
the public, and display the work publicly. Id. (citing 17 U.S.C. §
106(1)-(3) & (5)).
Copyright protection begins when a work protected under the
Copyright Act takes a tangible form and vests with the author of
the work. 17 U.S.C. § 201(a); JCW Invs., Inc. v. Novelty, Inc., 482
F.3d 910, 914 (7th Cir. 2007) (copyright protection generally
begins at the moment of creation of an original work fixed in a
tangible medium). Ownership of a copyright may be transferred in
whole or in part and any of the exclusive rights of copyright may be
transferred. 17 U.S.C. § 201(d). A transfer of ownership, other
Page 18 of 56

than by operation of law, must be in writing and signed by the
owner of the rights conveyed. 17 U.S.C. § 204. Only the legal or
beneficial owner of the copyright may bring an infringement action.
See 17 U.S.C. § 501(b) (providing that the “legal or beneficial owner
of an exclusive right under a copyright” may bring an infringement
action for “any infringement of that particular right committed
while he or she is the owner of it”).
In addition, while a copyright does not need to be registered
with the Copyright Office to be valid, an application for registration
must be filed before a suit for infringement may be filed. 17 U.S.C.
§ 411(a) (providing that subject to certain exceptions, “no civil
action for infringement of the copyright in any United States work
shall be instituted until preregistration or registration of the
copyright claim has been made in accordance with this title”); Chi.
Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003).
The effective date of copyright registration is the day on which the
application, deposit, and fee—which are later determined to be
acceptable by the Register of Copyrights or by a court—have been
received in the Copyright Office. 17 U.S.C. § 410(d). In this case,
an application for registration was filed on April 4, 2013 and the
Page 19 of 56

certificate of registration was issued May 29, 2013. Suit was filed
on March 19, 2015. Therefore, Plaintiff complied with this aspect
of the registration requirement.
A certificate of registration from the Register of Copyrights
made before or within five years after first publication of the work
constitutes prima facie evidence of the validity of the copyright and
the facts stated in the certificate. 17 U.S.C. § 410(c); Varsity
Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 479 (6th Cir.
2015) (affording Skidmore as opposed to Chevron deference to a
certificate of registration made before or within five years after first
publication of the work), cert. granted in part 136 S. Ct. 1823
(2016) (certiorari granted on question of the appropriate test used
to determine when a feature of a useful article is protectable under
§ 101 of the Copyright Act). When copyright registration is not
prima facie evidence of the validity of a copyright, the weight to be
given to the certificate of registration is within the discretion of the
district court. Id. The reason for the distinction is that, when there
is a long lapse of time between publication and registration, it is
less likely that the facts stated in the certificate are reliable. 3
Nimmer on Copyright § 12.11[A][1].
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Here, the first publication of the work occurred on October
30, 2007. Plaintiff filed for copyright registration on April 4, 2013,
and the Copyright Office issued a certificate of registration on May
29, 2013. Because registration was not made before or within five
years after first publication of the work, the copyright registration
does not constitute prima facie evidence of the validity of the
copyright and the facts stated in the certificate. See Int’l Media
Films, Inc. v. Lucas Entm’t, Inc., 703 F. Supp. 2d 456, 463 (S.D.
N.Y. 2010) (“copyright registration is not prima facie ownership of a
valid copyright when registration . . . is made more than five years
after the original publication.”). Therefore, this Court can
determine how much weight to give the copyright registration. In
light of the Court’s discretion, and for purpose of summary
judgment, this Court will give little weight to the certificate of
registration and will make an independent determination of
whether the work is copyrightable. See, e.g., Whimsicality, Inc. v.
Battat, 27 F. Supp. 2d 456, 462 (S.D.N.Y. 1998) (finding that, even
where the copyright registration is prima facie evidence that the
copyright is valid, the court may still make an independent
determination of whether the work is copyrightable).
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A.

The Undisputed Facts Demonstrate Ownership of a Valid
Copyright by Plaintiff

1.

Plaintiff has owned the copyright since 2008.
To bring an infringement action, Plaintiff must have been the

owner of the copyright at the time the infringement occurred or
have received an assignment of the right to sue for copyright
infringement that occurred before ownership was transferred. See
17 U.S.C. § 501(b) (providing that the “legal or beneficial owner of
an exclusive right under a copyright” may bring an infringement
action for “any infringement of that particular right committed
while he or she is the owner of it”); Pickett v. Prince, 207 F.3d 402,
404 (7th Cir. 2000) (wherein the assignment expressly granted the
assignee the right to sue for infringements that occurred prior to
the assignment); Oskar Sys., LLC v. Club Speed, Inc., 745 F. Supp.
2d 1155, 1159 (C.D. Cal. 2010) (an assignment of a copyright does
not also assign existing causes of actions for infringement unless
the assignment specifically provides for the assignment of existing
causes of action). Plaintiff claims the infringement by Defendants
occurred at least as early as 2012. Plaintiff asserts that the
undisputed facts show that Plaintiff has owned the Sparrow Clips
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copyright since 2008 and that, in any event, Defendants lack
standing to challenge Plaintiff’s ownership. Defendants argue that
genuine issues of material fact remain regarding whether a valid
assignment of the copyright occurred before the execution of the
2013 Royalty Agreement. In particular, Defendants note the lack
of an executed 2008 Royalty Agreement. In addition, Defendants
argue that the conduct between Plaintiff and Mr. Waiwiriya from
2008 to 2013 is inconsistent with a transfer of the copyright to
Plaintiff in 2008. Defendants point to Mr. Waiwiriya’s submission
of additional Sparrow design products to Plaintiff, the execution of
an Exhibit A for black Sparrow Clips in 2013, Plaintiff’s 2013
disclaimer of a copyright in the Sparrow Clips in its 2009 product
catalog, and references to “licenses” when Plaintiff and Mr.
Waiwiriya discussed the Sparrow Wine Stopper.
As noted above, ownership of copyrights can be transferred.
See 17 U.S.C. § 201(d); Billy-Bob Teeth, Inc. v. Novelty, Inc., 329
F.3d 586, 591 (7th Cir. 2003). Section 204(a) of the Copyright Act
requires that a transfer of ownership be in writing, but also
permits an oral assignment to be confirmed later in writing. See
17 U.S.C. § 204 (providing that a transfer, “other than by operation
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of law, is not valid unless an instrument of conveyance, or a note
or memorandum of the transfer, is in writing and signed by the
owner of the rights conveyed or such owner’s duly authorized
agent”); Billy-Bob Teeth, 329 F.3d at 591 (stating that § 204(a)
provides that an “oral assignment may be confirmed later in
writing”). However, where there is no dispute between the
copyright owner and the transferee about the status of the
copyright, a third party does not have standing under § 204 to
challenge copyright ownership. Id. at 592 (describing § 204 as
being “in the nature of a statute of frauds” and that the statute “is
designed to resolve disputes among copyright owners and
transferees”).
In this case, Plaintiff and Mr. Waiwiriya do not dispute that
copyright ownership transferred to Plaintiff in 2008. Therefore,
under the authority of Billy-Bob Teeth, Defendants lack standing
under § 204 to challenge copyright ownership.
Defendants attempt to distinguish Billy-Bob Teeth on the
ground that the rule does not apply when the transferor (in this
case, Mr. Waiwiriya) has not joined the lawsuit. However, nothing
in Billy-Bob Teeth suggests that both the transferor and transferee
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were plaintiffs in that case. See also Civil Docket for Billy-Bob
Teeth Inc. v. Novelty Inc., Southern District of Illinois Case No.
3:99-cv-00963-DRH (listing only Billy-Bob Teeth Inc. as the
plaintiff and not listing the transferor, Jonah White, as a plaintiff);
see also Software for Moving, Inc. v. La Rosa Del Monte Express,
Inc., No. 07 C 1839, 2007 WL 4365363 at *3 (N.D. Ill. Dec. 7,
2007) (finding the defendants did not have standing to invoke §
204 and argue that the plaintiff could not produce a copy of a
written instrument of conveyance or note or memorandum of the
transfer because there was no dispute between the copyright
owner and the transferee over the status of the copyright; only the
transferee was a plaintiff). And in the case cited by Defendants,
Imperial Residential Design, Inc. v. Palms Development Group,
Inc., 70 F. 3d 96, 99 (11th Cir. 1995), the court did not hold that
both the transferor and transferee must be joined in the lawsuit.
Instead, the court stated: “at least in a case such as this one—
where both the original owner and the transferee have joined as
plaintiffs in the same lawsuit—we will not let the alleged infringer
invoke section 204(a).” Imperial, 70 F.3d at 99.

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Defendants also attempt to distinguish Billy-Bob Teeth by
arguing that the rule does not apply when the subsequently
executed written document purports to retroactively grant rights
that the original agreement never included. Defs. Opp. at 35
(citing Righthaven LLC v. Democratic Underground, LLC, 791 F.
Supp. 2d 968, 975 (D. Nev. 2011)). Defendants assert that they
agree that some transfer of rights occurred in 2008 but that
genuine issues of material fact exist whether the 2013 document
accurately reflects the 2008 transaction.
In Righthaven, the court found that the plaintiff lacked
standing to sue for infringement because the agreement between
the plaintiff and the copyright owner did not transfer ownership or
any of the exclusive rights defined in § 106 of the Copyright Act to
the plaintiff. Righthaven, 791 F. Supp. 2d at 974. That court held
that a second document executed after suit was filed that
attempted to correct the error did not create standing because
federal jurisdiction depends on the facts that exist when the
complaint is filed—and the plaintiff did not have standing when
the complaint was filed. Id. The court distinguished Billy-Bob
Teeth on the ground that, in that case, the document executed
Page 26 of 56

after initiation of the lawsuit merely confirmed the oral assignment
that had occurred prior to initiation of the lawsuit. Id. (noting that
the Righthaven plaintiff was asking the court to “fundamentally
rewrite the agreement . . . to grant [the plaintiff] rights that it never
actually received”).
In contrast here, Plaintiff is not attempting to rewrite the
agreement by way of the 2013 Royalty Agreement. The undisputed
facts reflect that Mr. Waiwiriya signed a 2008 Royalty Agreement, a
signed copy of which cannot be found. An unsigned copy of the
2008 Royalty Agreement (pages 1-5, missing only the signature
block) is contained in the record, as is the 2008 signed Exhibit A to
the Royalty Agreement. See Mr. Waiwiriya’s Declaration ¶ 23, Ex.
M. Because the 2008 Royalty Agreement is in the record, the
Court knows what rights Mr. Waiwiriya purported to transfer to
Plaintiff in 2008, namely, “the entire right, title and interest in and
to the Products and worldwide Intellectual Property on such
Products.” Id. These facts are much different than the facts in
Righthaven, wherein the parties’ original agreement clearly only
transferred the right to bring an infringement suit and not any of
the exclusive rights defined in the Copyright Act. In addition, the
Page 27 of 56

second document—the 2013 Royalty Agreement—was not created
after the lawsuit was filed, as was the case in Righthaven.
Moreover, even if Defendants do have standing to challenge
copyright ownership under § 204, the Court finds the writing
requirement of § 204 satisfied. Plaintiff has submitted a fully
executed copy of Exhibit A to the Royalty Agreement, which
specifically references the Royalty Agreement and reflects that the
product subject to the Royalty Agreement was the Sparrow Clip.
See, e.g., Mid-Town Petroleum v. Dine, 72 Ill. App. 3d 296, 303-04
(1st Dist. 1979) (finding the statute of frauds satisfied where the
signed and unsigned writings were connected and contained all of
the necessary elements). Mr. Waiwiriya also avers that he
executed a Royalty Agreement in 2008 selling all of his worldwide
intellectual property rights to his bird pin design under the terms
of the Royalty Agreement. Declaration ¶ 27 (d/e 113). Defendants’
evidence regarding Plaintiff’s and Mr. Waiwiriya’s conduct with
regard to other products is immaterial to whether Plaintiff obtained
the copyright to the Sparrow Clips in 2008. How the parties chose
to proceed with other products has no effect on the validity of the
earlier transfer of ownership. Moreover, Plaintiff’s April 11, 2013
Page 28 of 56

disclaimer of a copyright of the Sparrow Clips in the 2009 catalog
is also immaterial where Plaintiff had registered the copyright of
the Sparrow Clips on April 4, 2013. In sum, the undisputed facts,
even taken in the light most favorable to Defendants, demonstrate
that Plaintiff owns the copyright to the Sparrow Clips.
2.

Plaintiff has a valid copyright
Having found no issue of material fact regarding ownership

and registration of the copyright, the Court next examines whether
issues of fact remain regarding the validity of the copyright.
Plaintiff and Defendants both seek summary judgment on
whether the Sparrow Clips are subject to copyright. This
determination is an issue of law for the Court and is appropriate
for resolution on summary judgment. See Janky v. Lake Cnty.
Convention & Visitors Bureau, 576 F.3d 356, 363 (7th Cir. 2009)
(holding that under Seventh Circuit precedent, “‘copyrightability is
always an issue of law’”) (quoting Gaiman v. McFarlane, 360 F.3d
644, 648 (7th Cir. 2004)).
a.

The bird design is original.
Copyright protection subsists in original works of authorship,

including pictorial, graphic, and sculptural works. 17 U.S.C.
Page 29 of 56

§ 102(a)(5); Wildlife Express Corp. v. Carol Wright Sales, Inc., 18
F.3d 502, 507 (7th Cir. 1994) (to be eligible for copyright, a work
must be original). Plaintiff claims copyright only in the separable
bird sculpture and the color selection shown in each set of the
Sparrow Clips.
Defendants argue that the bird shape is not original because
it does not meaningfully vary from stock depictions of bird
silhouettes. According to Defendants, Plaintiff cannot monopolize
the limited number of ways to express the general idea or shape of
a small bird.
Plaintiff asserts that the bird design meets the minimal
requirements for creativity because it is a not a realistic depiction
of a bird but rather a fanciful silhouette with a distinctive pose,
posture, and overall expression. Additionally, Plaintiff maintains
that it is not seeking to monopolize the idea of bird-topped
clothespins but that it only owns the rights to this particular
expression of the idea.
“Original, as the term is used in copyright, means only that
the work was independently created by the author (as opposed to
copied from other works), and that it possesses at least some
Page 30 of 56

minimal degree of creativity.” Feist, 499 U.S. at 345 (also noting
that “[t]he requisite level of creativity is extremely low”); Publ’ns
Int’l, Ltd. v. Meredith Corp., 88 F.3d 473, 479 (7th Cir. 1996)
(requiring “some minimum indicia of creativity”). Originality does
not mean novelty. Kelley v. Chi. Park Dist., 635 F.3d 290, 302 (7th
Cir. 2011).
Here, the evidence is undisputed that the Sparrow Clips were
not copied from any source. See Plaintiff’s Undisputed Fact No. 12
(“Mr. Waiwiriya did not copy the two-dimensional outline or threedimensional shape of his bird design from any source”); No. 51
(“Chris Hardy did not copy his selection of the SPARROWCLIPS
colors from any source”) (d/e 96); Defendants’ Response to No. 12
and No. 51 asserting only that the facts are immaterial (d/e 107).
Moreover, the Sparrow Clips design portrays a perching bird
with a distinct and creative pose, posture, and overall expression.
The bird is neither a generic bird design nor a lifelike
representation but is an artist’s rendering of the impression of a
bird. Therefore, the Sparrow Clips meet the low creativity bar for
copyright protection. See, e.g., Wildlife Express, 18 F. 3d at 508
(noting other cases in which the Seventh Circuit has held that
Page 31 of 56

original manner of expressing an idea has been expressed in the
“shapes, sizes, colors, sequences, arrangements, and sounds” of a
video game and the pose, posture, and facial expression of a
realistic deer sculpture); Lucky Break Wishbone Corp. v. Sears,
Roebuck & Co., 528 F. Supp. 2d 1106, 1120-21 (W.D. Wa. 2007)
(finding that the creative elements of a plastic breakable turkey
wishbone met the low standard for creativity), aff’d 373 F. App’x
752 (9th Cir. 2010). In addition, the Court finds that, while color
itself is not subject to copyright protection, “the author’s choice in
incorporating color with other elements may be copyrighted.”
Boisson v. Banian, Ltd., 273 F.3d 262, 271 (2d Cir. 2001) (finding
the district court committed clear error by finding that the
plaintiff’s choice of colors in the quilt were not a protectable
element (i.e. not original) where the court should have considered
the color choice along with the plaintiff’s other creative choices);
Games Workshop Ltd. v. Chapterhouse Studios, LLC, No. 10 C
8103, 2012 WL 5949105, at *11 (N.D. Ill. Nov. 27, 2012) (finding
that the plaintiff “could not base its copyright claim on a depiction
of an “X” or a chevron alone, [but] its depiction of an original,
creative shoulder pad with a distinctive color scheme is sufficient
Page 32 of 56

to satisfy the originality requirement”), on reconsideration in part,
2013 WL 1340559 (N.D. Ill. Apr. 1, 2013).
b.

The Sparrow Clips are a useful article but the bird design is
physically and conceptually separable from the useful
clothespin portion of the work.
Having found originality, the Court must next determine

whether genuine issues of material fact remain about whether
Sparrow Clips are a useful article not subject to copyright
protection.
Copyright protection subsists in original works of authorship
fixed in any tangible medium, including pictorial, graphic, and
sculptural works. 17 U.S.C. § 102(a)(5); 17 U.S.C. § 101 (defining
pictorial, graphic, and sculptural works to include two- and threedimensional works of fine, graphic, and applied art). Useful
articles, defined as articles that have “an intrinsic utilitarian
function that is not merely to portray the appearance of the article
or to convey information,” are not entitled to copyright protection.
See 17 U.S.C. § 101 (defining useful article); Incredible Techs., Inc.
v. Virtual Techs., Inc., 400 F. 3d 1007, 1012 (7th Cir. 2005) (noting
that “[t]he exclusion of functional features from copyright
protection grows out of the tension between copyright and patent
Page 33 of 56

laws”). However, if a work is a useful article, it can still fall within
the definition of “pictorial, graphic, and sculptural work” and be
protected by copyright “if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article.” 17 U.S.C. §
101. Courts have interpreted this language as requiring either
physical or conceptual separability between the utilitarian and
artistic aspects of the work for the design to be copyrightable.
Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913, 922
(7th Cir. 2004); Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413
F.3d 324, 326 (2nd Cir. 2005) (individual design elements of useful
articles are entitled to some protection under the Copyright Act if
those design elements are physically or conceptually separable
from the article itself); see also Compendium of U.S. Copyright
Office Practices, Third Edition, § 906.8 (“the decorative
ornamentation on a useful article may be registrable if it is
separable from the functional aspects of that article”).
The Court finds no genuine dispute that the Sparrow Clips
are a useful article. The Sparrow Clips as a whole have the
Page 34 of 56

intrinsic utilitarian function of hanging objects from the clothespin
portion of the design. In fact, even Plaintiff’s packaging for
Sparrow Clips recognizes the functionality of the Sparrow Clips,
describing Sparrow Clips as both “functional” and “fashionable.”
See also Plaintiff’s Mot. for Partial Summ. J. at 35 (noting that the
clothespin portion is useful). Therefore, whether the Sparrow Clips
are subject to copyright depends on whether the artistic features
are separate from the utilitarian features. See, e.g., Bonazoli v.
R.S.V.P. Int’l, Inc., 353 F. Supp. 2d 218, 221, 225 (D.R.I. 2005)
(involving heart and arrow design measuring spoons and finding
no separability, noting that the design was not original to the
plaintiff and was adapted to be a set of measuring spoons).
Plaintiff contends that the undisputed facts show that the
bird design is physically and conceptually separable from the
useful clothespin portion of the work. Plaintiff also asserts that
the bird design is not itself a useful article. According to Plaintiff,
secondary, subsequently discovered uses for the bird design do not
make it functional.
Defendants argue that the bird design is not physically
separable from the clothespin portion because removing the bird
Page 35 of 56

portion fundamentally changes the nature of the article, leaving
only a clothespin. Defendants further argue that the bird design is
not conceptually separable because every aspect of the bird
silhouette serves a utilitarian purpose: (1) the bird’s tail is flexible
and open at one end to allow the body of the bird to be used as a
hook; (2) the bird’s body is round to encircle a rod; (3) the bird’s
head is round to envelope a smaller rod; and (4) the bird’s beak is
pointed such that it can hang from a thin string.
Defendants also argue that the bird design is itself a useful
article. Defendants point to additional facts as evidence of the
usefulness of the bird portion of the Sparrow Clip: (1) the use of
the bird design portion of the Sparrow Clips by the New Clothesline
Company to hang a Sparrow Clip from a rod; (2) Plaintiff’s use of
the same bird shape on other items, like the Sparrow Wine
Stopper, which used the bird design as the handle; (3) Mr. Van
Meter’s admission at his deposition that the hanging functionality
of the bird component is useful; and (4) the 2011 presentation by
Mr. Waiwiriya showing a Sparrow Clip hanging from a clothesline
by the bird’s beak.

Page 36 of 56

The Court finds, as a matter of law, that the bird design is
both physically and conceptually separable from the utilitarian
aspect of the work. Stanislawski v. Jordan, 337 F.Supp.2d 1103,
1111-12 (E.D. Wis. 2004) (“copyright protection is clearly limited to
those aspects of the frames’ designs that exist apart from their
utilitarian value”). The bird design is physically separable because
the bird design can be physically removed and leave the utilitarian
function of the clothespin intact. See, e.g., Wildlife Express, 18
F.3d at 506 (affirming district court; district court found that soft
sculpture animal heads and tails attached to duffle bags were
separably identifiable from the utilitarian duffle bag); Pivot Point,
372 F.3d at 922 (discussing physical separability and citing Mazer
v. Stein, 347 U.S. 201 (1954) for the proposition that a “statuette
incorporated into the base of a lamp is copyrightable”);
Compendium of U.S. Copyright Practices, Third Edition § 924.2(A)
(giving as an example of physical separability a “sufficiently
creative decorative hood ornament on an automobile”).
The bird design is also conceptually separable. To be
conceptually separable, one must be able to conceptualize the
artistic aspects of the article as existing independently of the
Page 37 of 56

utilitarian function of the article. Pivot Point, 372 F.3d at 931.
The artistic aspects exist independently if “the design elements can
be identified as reflecting the designer’s artistic judgment exercised
independently of functional influences.” Id. (quoting Brandir Int’l
Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142, 1145(2d Cir.
1987)). If so, conceptual separability exists. Id. If, however, a
useful article’s design is “as much the result of utilitarian pressure
as aesthetic choices,” conceptual separability does not exist. Id.
(citations and quotations omitted); see also Compendium of U.S.
Copyright Practices, Third Edition § 924.2(B) (giving as an example
of conceptual separability a carving on the back of chair, noting
that “one could imagine the carving . . .as a drawing on a piece of
paper that is entirely distinct from the overall shape of the chair”
and, even if the carving was removed, the shape of the chair would
remain unchanged and the chair would still be capable of serving a
useful purpose) (citing H.R. Rep. No. 94-1476, at 55 (1976),
reprinted in 1976 U.S.C.C.A.N. at 5668-69).
By way of example, in Pivot Point, the Seventh Circuit held
that the particular face on the “Mara mannequin”—portraying the
“hungry look” of a fashion model—was conceptually separable from
Page 38 of 56

the mannequin’s use in hair display and make-up training because
it was the product of the German artist’s artistic judgment. Pivot
Point, 372 F.3d at 931. There was no evidence that the artist’s
judgment was constrained by functional considerations—i.e. that
the eyes had to be a certain width or the brow had to have a
certain arch to facilitate make-up application. Id. at 931-32.
Moreover, it was not “difficult to imagine a different face than that
portrayed on the Mara mannequin,” meaning that Mara’s specific
features were not necessary to “serve the utilitarian function of a
hair stand and, if proven, of a makeup model.” Id. at 931.
Similarly here, the only evidence in the record shows that the
bird design was a product of Mr. Waiwiriya’s artistic judgment and
that his judgment was not constrained by functional
considerations. In fact, he originally designed the product as an
art piece. Therefore, the specific artistic choices in creating the
bird design—which did not change when Mr. Waiwiriya
strengthened the clothespin portion so that the Sparrow Clip could
hold things—was not constrained by functional considerations.
Because of that, this case is distinguishable from Brandir
Int’l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142, 1147 (2d
Page 39 of 56

Cir. 1987), which involved bike racks that were derived from wire
sculptures. The court noted that if the designer had adopted an
existing wire sculpture as a bike rack, the object would not have
forfeited its copyrighted status. Id. However, because the designer
adapted the original aesthetic elements of the sculpture to
accommodate and further a utilitarian purpose—by widening the
upper loops to permit parking under and over the rack’s curves,
straightening the vertical elements to allow for in-and-above
ground installation, and using heavy-gauged tubular
construction—the rack was a product of industrial design and not
subject to copyright protection. Id. (finding form and function
inextricably intertwined).
In contrast here, form and function are not inextricably
intertwined. Mr. Waiwiriya did not adapt the bird design to further
a utilitarian purpose. The bird design is ornamental and separate
from the utilitarian function of the clothespin portion of the
Sparrow Clip. As such, the design is conceptually separable from
the function of the clothespin. See Kieselstein-Cord v. Accessories
by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980) (involving
decorative and jeweled belt buckles and finding “the primary
Page 40 of 56

ornamental aspect of the [belt] buckles [was] conceptually
separable from their subsidiary utilitarian function”).
Further, the cases cited by Defendants are also
distinguishable. In Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d
1038, 1042 (9th Cir. 2014), the court held that the distinctive
shape of a hookah water container was not conceptually separable
from its function as a container. Id. This was because the shape
accomplished the function of holding liquid. Id.; see also
Compendium of U.S. Copyright Practices, Third Edition § 924.2(B)
(“If the feature is an integral part of the overall shape or contour of
the useful article, that feature cannot be considered conceptually
separable because removing it would destroy the basic shape of the
useful article”).
In this case, however, the artistic feature—the bird
sculpture—and the useful article—the clothespin—are not one and
the same. The bird shape does not accomplish the purpose of the
clothespin holding items—even though the bird design may also be
used as a hanger, as addressed further below regarding secondary
functions.

Page 41 of 56

Also distinguishable is Carol Barnhart Inc. v. Economy Cover
Corp., 773 F.2d 411, 418-19 (2d Cir. 1985), which held that the
artistic features of sculptured torsos—identified as “the life-size
configuration of the breasts and the width of the shoulders”—used
to display clothes were not conceptually separable from the torso’s
utilitarian function of displaying clothes because the torso had to
have some configuration of the chest and some width of shoulders
to serve its utilitarian function. In contrast here, the bird design is
not necessary to the clothespin hanging function.
Defendants next argue that the bird design itself is a useful
article. Defendants point out that the bird silhouette can hang
from a rod (see Appendix 2) or can hang on a string from the beak.
However, secondary functions for an item do not affect the
copyrightability of the item. See Home Legend, LLC v. Mannington
Mills, Inc., 784 F.3d 1404, 1412 (11th Cir. 2015) (finding the twodimensional Glazed Maple design on laminate flooring was both
physically and conceptually separable from the utilitarian flooring
itself and noting that the “secondary function of hiding wear or
other imperfections in the product . . . [was] not enough to
invalidate the copyright protection for the design); Brandir, 834
Page 42 of 56

F.2d at 1147 (noting that “Brandir argues correctly that a
copyrighted work of art does not lose its protected status merely
because it is put to a functional use” and noting that if the plaintiff
had merely adopted an existing sculpture and used it as a bicycle
rack, the object would not forfeit its copyrighted status);
Compendium of U.S. Copyright Office Practices, Third Edition
§ 924.1 (“a sculpture does not become a useful article simply
because it could be used as a doorstop or a paperweight”).
Therefore, the fact that the Sparrow Clips bird design has a
subsequently discovered secondary function that involves direct
use of the bird sculpture does not invalidate the copyright
protection for the design.
For the same reasons, the Court rejects Defendants’ claim
that they have presented a submittable case for fraud on the
Copyright Office. Defendants argue that Plaintiff failed to disclose
the subsequent, secondary uses of the Sparrow Clip discovered in
2011 (that the bird portion could be used to hang on a rod) when
Plaintiff applied for the copyright registration in 2013.
A copyright registration can be invalidated if it was obtained
by the submission of knowing misrepresentations of material fact.
Page 43 of 56

17 U.S.C. § 411(b)(1)(A)-(B); DeliverMed Holdings, LLC v.
Schaltenbrand, 734 F.3d 616, 622 (7th Cir. 2013). Before a court
invalidates a copyright registration under this provision of the
statute, the court must request that “the Register of Copyrights
advise the court whether the inaccurate information, if known,
would have caused the Register of Copyrights to refuse
registration.” 17 U.S.C. § 411(b)(2). However, the Court should
employ this mechanism only when necessary, after the party
establishes that the application for registration included
inaccurate information and that the registrant knowingly included
the inaccuracy. DeliverMed, 734 F.3d at 625. Because secondary
utilitarian functions do not invalidate copyright protection, Plaintiff
did not knowingly include inaccurate information on the
application. As such, the Court finds that it need not ask the
Register of Copyrights if the additional information would have
caused the Register to refuse registration.1

In addition, the Court could find waiver of the defense. Defendants raised
fraud as an affirmative defense but only alleged that Plaintiff falsely
represented that the work was a work made for hire. See Answers (d/e 101),
(d/e 48), (d/e 49); Lennon v. Seaman, 84 F. Supp. 2d 522, 525 (S.D. N.Y.
2000) (“An allegation of fraud on the Copyright Office is typically brought in
an infringement action as an affirmative defense to the enforcement of a
registered copyright certificate”); 17 U.S.C. § 101 (defining “work made for
1

Page 44 of 56

B.

The Undisputed Facts Demonstrate that Defendants
Copied the Constituent Elements of the Work that Are
Original
As noted above, the owner of the copyright has the exclusive

right to produce the work, prepare derivative works, and distribute
copies for sale. 17 U.S.C. § 106. Anyone who violates the
exclusive rights of the copyright owner is an infringer of the
copyright. 17 U.S.C. 501(a). To prove copyright infringement,
Plaintiff must prove that Defendants copied the constituent
elements of the work that are original. Nova Design Build, Inc. v.
Grace Hotels, LLC, 652 F.3d 814, 817 (7th Cir. 2011). The
undisputed evidence in this case shows Defendants copied the
constituent elements of the work that are original.
A plaintiff can prove copying by pointing to direct evidence of
copying or by showing that the alleged infringer had access to the
copyrighted work and that the alleged infringer’s works are
substantially similar to the copyrighted work. See Susan Wakeen
Doll Co., Inc. v. Ashton Drake Galleries, 272 F.3d 441, 450 (7th
Cir. 2001); Segrets, Inc. v. Gillman Knitwear Co., Inc., 207 F.3d 56,
hire” as a work prepared by an employee in the scope of his employment or a
work specially ordered or commissioned). However, Plaintiff does not argue
waiver.

Page 45 of 56

61 (1st Cir. 2000) (direct evidence of copying is rare). If a plaintiff
shows access and substantial similarity, the defendant can rebut
the inference of copying by showing that the allegedly infringing
work was independently created. JCW Invs., 482 F.3d at 915. In
this case, Defendants do not argue independent creation or point
to any evidence of independent creation. In fact, Defendants do
not address this element of Plaintiff’s claim at all.
Undisputedly, Defendants Meijer and TJX had access to the
Sparrow Clips, as they have admitted that they purchased Sparrow
Clips from Plaintiff. See Defs. Opp. at 10-11, Responses to
Plaintiff’s Undisputed Facts ¶¶ 87, 88 (admitting TJX purchases
Sparrow Clips in 2011 and Meijer purchased Sparrow Clips in
2012). As evidence that Whitmor had access to Sparrow Clips,
Plaintiff points to the emails between “[e-mail]” and “[e-mail]” in which Maisie confirms
receipt of the Sparrow Clips sample from Whitmor and indicating
that she would send a quote. Chris O’Brien (presumably the Chris
associated with the email “[e-mail]) responds by asking
if Maisie has a source with the existing mold and asking her to
inquire whether the design is patented.
Page 46 of 56

Defendants dispute this evidence, claiming that the emails do
not support Plaintiff’s assertion. Defendants also claim the email
is inadmissible because Plaintiff does not offer any evidence
authenticating the email or provide any context surrounding it.
The Court notes that the email string in question is Bates
stamped “WHT0000054” through “WHT0000061,” which suggests
that Whitmor produced the email in discovery. Yet, producing a
document in response to a discovery request does not amount to
an admission of the document’s authenticity. Castro v. DeVry
Univ., Inc., 786 F.3d 559, 578-79 (7th Cir. 2015) (“The mere act of
producing a document in response to a discovery request based on
the content of the document does not amount to an admission of
the document’s authenticity”).
However, even if the Court does not consider the emails,
access can be presumed where the “similarity is so close as to be
highly unlikely to have been an accident of independent creation.”
Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167, 1169 (7th Cir.
1997); JCW Invests., 482 F.3d at 916. Therefore, the Court turns
to the second requirement for showing copying: whether the two
products are substantially similar. Although substantial similarity
Page 47 of 56

is generally a question of fact, summary judgment is proper if a
comparison of the two works shows that no objective person would
find the works more than minimally distinguishable. See JCW
Invests., 482 F.3d at 916 (affirming district court’s grant of
summary judgment that the defendant infringed on the plaintiff’s
copyright, including the finding that the two products were
substantially similar, where both items were plush dolls of middleaged men sitting in armchairs who expel gas and tell jokes and
had the same crooked smiles, balding heads with a fringe of back
hair, a large protruding nose, blue pants of identical color, and
white tank tops; small cosmetic differences were insufficient to
distinguish the two products).
When determining whether an allegedly infringing work is
substantially similar to copyrighted work, the Court applies the
“ordinary observer” test: “whether the accused work is so similar
to the plaintiff’s work that an ordinary reasonable person would
conclude that the defendant unlawfully appropriated the plaintiff’s
protective expression by taking material of substance and value.”
Susan Wakeen Doll Co., 272 F.3d at 451 (citations and quotations

Page 48 of 56

omitted). The test is an objective one. JCW Invests., 482 F.3d at
916.
The Court has examined the photographs of the Sparrow
Clips and the Canary Clips as well as the actual Sparrow Clips and
Canary Clips submitted to the Court. No reasonable person could
find that the Sparrow Clips and the Canary Clips are not
substantially similar. In fact, other than color, they are essentially
identical. See, e.g., see Stanislawski, 337 F Supp. 2d at 1114
(“Where a virtual duplicate is presented to the Court, there is no
need to break down the copyrighted piece to determine what is,
and what is not, protected”).
The Canary Clips sold by Meijer are identical in size and
shape and virtually identical in color to the Sparrow Clips, with
only a slight variation in the shade of color in the four clips. See
Appendix 3. Two of the four Canary Clips sold by TJX are identical
in size and shape and virtually identical in color to the Sparrow
Clips while the color of the other two is different (gray instead of
red and a darker shade of blue). See Appendix 4. Even though the
colors are not identical, “[s]light or trivial variations between works
will not preclude a finding of infringement under the ordinary
Page 49 of 56

observer test.” Concrete Machinery Co., Inc. v. Classic Lawn
Ornaments, Inc., 843 F.2d 600, 608 (2d Cir. 1988). Moreover, a
party cannot escape infringement by merely changing the color.
See Segrets, Inc., 207 F.3d at 62 (providing that the defendant
could not “copy the intricate patterns and juxtapositions of the
Blanket Stitch design virtually line-for-line and then escape
liability for infringement merely by changing the color and saying
this necessarily destroys any substantial similarity”). An ordinary
observer viewing the Sparrow Clips and the Canary Clips would
conclude that one was derived and copied from the other.
Copyright does not protect ideas but only protects “the
author’s particularized expression of the idea.” Feist, 499 U.S. at
136. Nonetheless, in this case, the undisputed facts, even viewed
in the light most favorable to Defendants, show that Defendants
copied Plaintiff’s particularized expression of the idea.
Therefore, the Court finds that Plaintiff is entitled to partial
summary judgment on Count I that (1) Plaintiff owns a valid
copyright to its Sparrow Clips work and (2) Defendants infringed
that copyright by copying constituent elements of the work that are
original.
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VI. CONCLUSION
For the reasons stated, Plaintiff is entitled to partial summary
judgment on Count I that (1) Plaintiff owns a valid copyright to its
Sparrow Clips work and (2) Defendants infringed that copyright by
copying constituent elements of the work that are original. This
Opinion does not resolve Defendants’ affirmative defenses, other
than the fraud defense addressed herein.
On March 31, 2016, United States Magistrate Judge
Jonathan Hawley stayed discovery in this case. Therefore, this
matter is referred to Judge Hawley for the entry of an amended
scheduling order.
ENTER: August 25, 2016
FOR THE COURT:
s/Sue E. Myerscough
SUE E. MYERSCOUGH
UNITED STATES DISTRICT JUDGE

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APPENDIX 1
SPARROW CLIPS

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APPENDIX 2
SPARROW CLIPS ON THE LOFTi RACK

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APPENDIX 3
SPARROW CLIPS COMPARED TO CANARY CLIPS SOLD BY
MEIJER

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APPENDIX 4
SPARROW CLIPS COMPARED TO CANARY CLIPS SOLD BY TJX

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APPENDIX 5
PICTURES OF SPARROW CLIPS SUBMITTED TO THE
COPYRIGHT OFFICE

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